Choosing a Patent Attorney

Choice of Patent Attorney is one of the most important decisions that an inventor makes. Applying for a patent is very, very different from just filling out a form. It takes legal knowledge, insight, technical knowledge, persuasive ability and creativity to gain broad patent protection for an invention. Do not be afraid to interview a few different attorneys and/or agents. Probably the most important quality to watch for is the ability to quickly and accurately understand your invention. Also, persuasive ability is very important. So if the attorney you interview speaks persuasively to you, that is a good thing, as he will be able to use those same skills on the patent examiner. If you are an individual inventor or a firm with fewer than 500 employees you may find that a smaller sized law firm will be more responsive to you. If you work with a large firm you may find yourself competing with a corporate behemoth for your patent attorney's time.

Bars to Obtaining a Patent

Nothing in this website should be taken as legal advice, and this applies in particular to this section, which deals with laws in nations all over the world. The author cannot go over in detail the laws of each country in the world, and so is reduced to reciting general rules. There could be some countries to which these general rules do not apply. Moreover, even the United States rules are complicated and change with court decisions and the passage of new statutes. Space does not permit a complete discussion, which would take up an entire volume. Accordingly, everything in this section, in particular, should be viewed as general information and should not be relied upon for legal decision making. Consult with an attorney for an up-to-date discussion of the rules.

An inventor must be careful of the bars to patentability. These are actions that render an invention unpatentable. The most stringent bars are those of foreign countries, most of which require "absolute novelty," meaning that the invention has not been made known to the public anywhere on earth as of the earliest priority date of the patent application. This earliest priority date typically can be the U.S. patent application filing date, if an international, regional or foreign nation application is filed, claiming priority from the U.S. application, within a year of the U.S. filing date. (Yes, it is complicated). The result, however, is simple. If an invention is made "known to the public" before the filing of a first (typically U.S., for Americans) patent application, the bulk of the foreign (non-U.S.) rights are lost.

The United States is generally more forgiving, and the triggering events are different. The disclosure of an invention in a printed publication anywhere, the public use of the invention in the United States or an offer for sale or sale of an embodiment of the invention in the United States result, with some exceptions, in a bar to patentability that goes into effect one year after the action. This bar goes into effect whether or not the action was taken by the inventor. So if an inventor or anyone else described the invention in a printed publication more than a year ago, it can no longer be patented in the United States. Be very careful of these bars and seek legal counsel regarding them if you are in any doubt. It has, for example, been held that when an inventor purchases a prototype of the invention, even if it is only for the purpose of demonstrating the invention to possible investors, that this constitutes a sale of the patented item.

The Patenting Process

This article is designed to inform first time inventors about the typical course of events for a patent application.

I. The Patentability Search

Typically, prior to drafting a patent application a patentability search is performed, the purpose of which is threefold. First, it may be that someone else has already originated the invention. In the case in which the exact invention is shown in an existing publication ("anticipated by the prior art" in patent lingo), the wise course may be to abandon the patenting effort. In some cases, however, some aspects of the invention will be shown in the prior art, but others will be missing. In this event, it still may be a good idea to file a patent application for those aspects of the invention which are not anticipated. This brings up the second reason for performing a patentability search: To focus the patent application on the aspects of the invention which are most strongly inventive over the prior art. Third, although the search is not specifically designed to do this, it may find a patent that actually covers the invention within the scope of its claims. Claims will be described in greater detail below. They serve to define the invention and the scope of coverage of the patent. It is important to know if your anticipated product infringes someone else's patent, so that the inventor or any backers can avoid sinking money into a product that they cannot lawfully make, use or sell. If desired, the search firm can be directed to specifically look for patents that cover the invention within their claim scope. This type of search, an "infringement search" is typically quite a bit more expensive than a patentability search, however.

Law firms typically charge between $1,000 to $2,500 for a patentability search, depending on the subject matter and the firm you hire to perform the search. Typically, it is cheapest to search for simple mechanical inventions and most expensive to search chemical or electrical device inventions. The law firm typically hires a search firm in Washington, DC, to do the actual searching. The search firm must, of course, know what they are looking for, so the law firm drafts a letter describing the invention to the search firm. About three weeks later (one week later if an extra fee is paid to expedite the search) a stack of from 8 to 16 patents arrives at the law firm's office. The patent attorney reviews these patents and drafts a letter to the client explaining the prospects for gaining patent protection. There are a number of advantages to this system, to balance the cost, which can be quite a burden to the individual inventor. First, the Washington, DC search firm typically sends a representative to visit a patent examiner to ask him about which classes (all U.S. Patents are classified by subject matter) to search. This is an option that the general public does not have, short of flying to Washington, DC and trying to figure out the sprawling bureaucracy of the patent office. Because the patent examiners are divided up by art (field of endeavor) some examiners know a great deal about a particular type of art. Also, a patent attorney knows what to look for in the patents that are returned to him. Without a background in patent law and experience interpreting the significance of a patent, it is very easy for a lay person to arrive at erroneous conclusions concerning the significance, or lack thereof, of a patent found in a patentability search.

It is very important to note, however, that no search can be taken as a guarantee of patentability. Because it is impractical to search through the more than seven million issued U.S. patents, no less the wealth of foreign patents and nonpatent publications, any one of which could destroy patentability, some method must be used to winnow down the number of patents that the searcher actually views. Any system of winnowing down, however, is imperfect and could eliminate from initial viewing a "direct hit" reference. Accordingly, a search is a sensible first step, but far from a guarantee of patentability.,

With the advent of the Internet it is becoming easy for inventors to search the patent office files themselves, by way of the United States Patent and Trademark Office web site or the IBM web site. These sites have very nice search engines for searching the massive quantity of existing patents. If doing your own searching, remember to try to find all synonyms for any search term you may use. Also, it may not be a bad idea to take the patents you find to a cooperative patent attorney, for further analysis.

II. Drafting the Patent Application

The drafting and filing of a patent application typically costs between $3,000 for a simple mechanical invention prepared by a solo practitioner trying to build up his or her practice to $50,000 for a pioneering patent application for a complex electrical or chemical invention prepared by a large firm.

Expect it to take anywhere from 6 weeks to six months from the time the attorney accepts the job of drafting the application until the actual filing, depending upon how busy the attorney is and how complex the invention is. It is typical for a firm to require a deposit of one half the total quote at the beginning of the drafting job with one half to be paid at the time of filing.

A patent application generally includes drawings, a Background of the Invention Section, a Summary of the Invention Section, a Detailed Description of the Preferred Embodiment(s), a set of claims, and an abstract (in that order). In the Background section, the prior art ("prior art" means everything of record that has already been invented) is discussed. A skillful patent drafter will make it clear that there is some unsatisfied need that has not yet been met. The Summary of the Invention explains how that need is now satisfied by the invention that is the subject of the application.

The Detailed Description of the Preferred Embodiment(s) presents one or more detailed examples or embodiments of the invention. This is where the reference numbers visible in the patent drawings are called out in reference to various parts of the device being patented. The detailed description should be as detailed as possible and preferable does show more than one embodiment. Detail in this section will not limit the patent scope.

The set of claims is a crucial part of the application, because the claims define the invention and therefore define its scope. Drafting good claims is one of the most interesting and sometimes most challenging part of the job of being a good patent attorney. When the patent is enforced through a legal proceeding the court will compare the accused infringing device against the claims to see if the device falls within the scope of the invention as set forth in the claims, and therefore infringes the patent. Claims are written in a very arcane and difficult to understand manner. If you can bring yourself to do it, give the claims a good review, imagining yourself to be a competitor that is eager to "design around" the patent.

The abstract comes at the end of the application although it appears on the front of a published patent. Its basic purpose is to provide a brief description to permit a rapid evaluation by a reader of the subject matter of the patent.

III. The First Office Action

Expect to wait between nine months and two years before hearing anything back from the patent office (i.e., receiving a first office action). For simple mechanical inventions the wait is usually shorter and for software inventions the wait is relatively long because of the shortage of patent examiners and the enormous expansion in the number of patent applications filed in this art.

It is fairly typical for most if not all of the claims to be rejected in the first Office Action. This necessitates a response from the patent attorney who may amend the claims and argue for allowance. This will mean an additional fee to the client and one that is difficult to estimate in advance, because the cost of responding to the first Office Action is very dependent on the contents of the first Office Action.

There are four basic reasons for a claim being rejected. First, it could just be unclear. This is typically the easiest sort of problem to fix, and the examiner might even suggest language that is also acceptable to the applicant.

Second, and typically the very worst type of rejection, is nonenablement. This means that you have not described the invention sufficiently that a person of ordinary skill in art could practice the invention without undue experimentation. This is a little bit like the "Far Side" cartoon in which a scholarly looking person is writing a long set of equations on a chalkboard and in the middle are the words "and then a miracle happens." The patent application for a "telepathy device" having a block diagram showing a "brain wave reception and thought recognition" block will likely be rejected on this basis, if the examiner is awake and sober when he reads it. (Which is quite likely, as I find most examiners to be conscientious and intelligent.) This is the worst sort of rejection because it may be incurable, because you cannot go back and add the missing material after the filing date, without being forced to accept a new filing date.

Another difficult type of rejection to overcome is lack of novelty. This means that someone has already published a description of the same item. Generally, the attorney must search for a difference and/or amend the claims to create a difference.

An application may also be rejected, even though it is novel (new) if the invention is obvious given what has already been invented. For example, if a first patent showed an office chair on casters and a second patent showed an office chair that was height adjustable, a height adjustable office chair on casters would be deemed obvious. A patent attorney can fight against an obviousness rejection by arguing that even if the references are combined, the invention is not produced. He may also argue that there is no suggestion of combining the references. (This only works if the references relate to different fields of endeavor). Generally, the more references the examiner combines to produce his rejection, the easier it is to argue that the references should not have been combined. Also, the attorney may use a set of arguments termed, "the secondary considerations." These include commercial success of the product claimed, unexpected result, failure of others and long felt need in the industry. The commercial success argument has the form "well, it has been selling like hotcakes. So, if it was obvious, why didn't somebody else think of it and make a fortune." The unexpected result argument has the form, "Yes, compound A and compound B are known substances. It was unexpected, however, that combining compound A with compound B would produce an excellent hair tonic." Long felt need in the industry, has the form "people have been saying for years that they would love to have an electric light producing device, now we have invented one." The closely related failure of others argument takes the form, "competitors have failed to develop an electric light producing device for years, now we have done it."

IV. Allowance and Issuance

After the Amendment in response to the first Office Action is filed the chance of gaining allowance rises dramatically. In some cases it takes a few more tries. If the patent is given a "final rejection" by the patent office, the applicant can either give up, file an appeal to the Board of Patent Appeals and Interferences, or pay a request for continued examination fee ($395 for a small entity [less than 500 employees]) and continue trying to convince the examiner that the invention is patentable. In some cases the patenting effort is abandoned. Sometimes a patent can be obtained, but so much claim scope has to be surrendered in the process that the patent that issues would be worthless.

It is part of my philosophy of patent prosecution to avoid contradicting the examiner, but rather work with him, to subtly shift his perspective. I remember that the patent examiner is a human being and treat him in the way I would want to be treated, in his position. I find that working with the examiners, rather than taking an adversarial stance, has yielded good results.

An issue fee of about $700 is charged by the patent office at the time of patent allowance. Maintenance fees are due at 3 and 1/2 years, 7 and 1/2 years and 11 and 1/2 years, rising from a little over $500 (for a small entity [less than 500 employees]) to about $1,500 for the third maintenance fee.