Utilize a patent attorney?

February 1, 2007 7:41 AM

Should our company utilize a patent attorney for filing patents?

I work for an electronic design company. Throughout the past 15 years we have not been patenting any of our products (prior to this we did). The decision has been made to patent designs when warranted.

We are trying to decide if we should utilize a patent attorney to handle the patent submission or if we should designate someone in house to do it. I read a book on the process and it looks pretty straight forward but I am wondering whether the additional cost of utilizing a patent attorney may be worth it (I'm guessing we will patent 2-6 designs per year)?

I would appreciate hearing from other people on whether they do it themselves or use an attorney. I'm also interested in whether there are non-attorney based patent writers and whether anyone has experience with these. I'm also interested in an estimate of what we can expect an attorney to charge.

posted by tr45vbyt to work & money (10 comments total)

If you can find a good person to do it in-house, you'll save a lot of money. I think it would be worthwhile placing an ad. Here's an active Patent and Intellectual Property job board. You should make sure that whoever you hire will have something to do in the meantime between filings, like enforcing patent rights, licensing, etc.
posted by parmanparman at 7:57 AM on February 1, 2007

I've had IP lectures from patent agents. You don't necessarily need a lawyer, but not using an experienced patent agent is essentially guaranteeing that your patent will be rejected or declared invalid if challenged. The language used in patents is very specific and not really english, much like in contract law.

These people are obviously biased, but if these patents are serious intellectual property for your company and not just a way of recognizing employee inventions, get at least a patent agent.

IANAL and I only took one course on law in business grad school. YMMV.
posted by GuyZero at 7:58 AM on February 1, 2007

Yes. Without a doubt, if you value the product, design or technology get an attorney. I have been on both sides: trying to do it myself and having representation put it together for me. Most patent attorneys will carry errors and omission so if they screw it up you are covered to some extent.
posted by bkeene12 at 7:58 AM on February 1, 2007

I'm also interested in whether there are non-attorney based patent writers

There are, and they're called patent agents. I would probably advise using a patent attorney or agent; if you don't, at least get someone who's reasonably knowledgeable about patent law and how the patent system works. An engineer may have great knowledge of the design itself, but if he tries to write the patent alone, without much knowledge of patent law, the patent won't be as effective as it could be. Attorneys and agents (good ones, at least) are skilled at writing the patent in such a way that a) you claim as much as possible; you don't want a competitor to be able to make some tiny, insignificant change to your design and get away with it because that variability wasn't included in your patent claims; and b) if you don't get everything you initially tried to claim, because of some prior art you didn't know about, you at least still get protection for some smaller subset of what you wanted.
posted by DevilsAdvocate at 8:01 AM on February 1, 2007

You don't necessarily need a lawyer, but not using an experienced patent agent is essentially guaranteeing that your patent will be rejected or declared invalid if challenged.

Absolutely true. You can save money on the front end by prosecuting your own patent, but it is difficult to overstate the value of having someone who's knowledgeable with drafting styles, using patent keywords, and interacting with the PTO examiners. This is make-or-break stuff if you ever assert your patent in litigation and/or it's ever challenged.

Perhaps unfortunately, the patent system is highly sophisticated and technical, and prosecution subtleties are at least as important as a good-faith effort by an inventor to fully & accurately claim his invention.

My perspective is that of a law student who has done some prosecution work at a patent law firm, but this is not legal advice and I do not represent you.
posted by rkent at 8:06 AM on February 1, 2007

I used to work for a defense contractor who applied for lots and lots of patents. Kind of a troll, actually.

I'm not a lawyer or a patent agent, but I wrote quite a few patents for the company, and responded to a ton of PTO actions. In my experience, the PTO actions aren't really that...intelligent.

Sure they'll argue that your patent is non-unique because of this and that prior art, but when you look at the cited prior art, more than half the time it was complete nonsense. Maybe I just got lucky and had dumb patent examiners.

If you're considering it, I recommend Nolo's book.

A good reason, however, to have a professional do it, is if you're afraid of litigation later, as you'd obviously like your patent to be written in such a way as to prevent you from losing a patent battle.
posted by zazerr at 8:20 AM on February 1, 2007

you'd obviously like your patent to be written in such a way as to prevent you from losing a patent battle

You should read Pressman's book linked above in any case. Patent attorneys and agents are paid when the application is filed and/or granted and if the patent is ever prosecuted it will likely be years later and they, unlike a tax preparer, do not have any obligation or stake in being involved in that.

Many patent attorneys and agents have never been involved in defending a patent, and just want to get the thing done and paid for. Making the patent bullet proof is just extra work that won't be appreciated, and will probably never be needed, as only a very small percentage of patents ever become an issue of litigation.

Having someone in-house with an ongoing accountability for the patent is probably a good thing, but the inventor should be as knowledgable as possible, and take a direct interest in how the patent is constructed.

The cost of preparing a patent might be in the range of $5000 to $30,000, where you would hope that the higher end results in a stronger patent.

Given the high cost of challenging a patent, even obviously flawed patents have value once they are issued.

An intelligent inventor who does his homework should be able to craft a decent patent, if he takes advantage of all the resources available. He should read that book, he should talk to the experts on the PTO inventor's hotline, and he should appear in person whenever possible to meet with the examiner. He has the right to request that the examiner word one of the claims for him.

The inventor is given some special considerations in the process, compared lawyers cranking 'em out. There is even some precedent to expect that the claims in a patent written by the inventor will be interpreted in a slightly more generous manner if it comes to litigation.
posted by StickyCarpet at 10:18 AM on February 1, 2007

Patent attorneys and agents are paid when the application is filed and/or granted and if the patent is ever prosecuted it will likely be years later and they, unlike a tax preparer, do not have any obligation or stake in being involved in that.

Just to be clear about terms used throughout the thread - the "filing and/or granting" process you describe is actually called prosecution, and your use of "prosecuted" should probably be "litigated."

Furthermore, the prosecuting attorney is frequently called upon to testify or give a deposition should the patent be litigated somewhere down the line. He or she could be asked about why certain terms were chosen in drafting, what those terms were believed to mean at the time, and any number of questions about prior art that he or she might have discovered. In short, prosecuting attorneys do have lots of incentives to produce good patents, as they do remain sort of tied to them. Not to mention the general reputational benefits of doing work that stands up to challenge.
posted by rkent at 11:18 AM on February 1, 2007

Absolutely get an experienced patent attorney. I have filed about 30 applications, with 12 issued; the costs are generally around $5000 to $10000. One set of them (three patents) ended up costing about $150K, but interestingly they were licensed by a big company because they were written very broadly and were bulletproof.

To me, an inventor writing his or her own patent is like doing your own appendectomy. Sure, you can read up on it, watch videos, even practice on your dog, but the chances of screwing up are pretty big, as are the consequences. The cost of prosecuting the patent is tiny compared to what it's going to cost to litigate it. For your patent to be worth anything, it has to be able to stand up to litigation, and drafting the claims to withstand the assault of teams of $500/hour lawyers is not a job for amateurs.
posted by Wet Spot at 6:09 PM on February 1, 2007

Speaking as a former IP lawyer, I can tell you that patent prosecution is one of the more complex areas of the law. To be a registered patent lawyer, you need to pass a state bar exam, and then the patent bar exam, and also have a technical degree. There is a high barrier to entry. And for good reason.

Yes there are plenty of DIY patent books out there. They make writing a patent and prosecuting it look simple. Maybe it can be in a particular instance. But I have seen my share of people who regretted doing it themselves. By law you can prosecute your own patent if you are the legitimate inventor.. Of course in the US, with a few judge imposed exceptions, you can also act as your own attorney in a murder prosecution. Shoot, I can even buy a drill and to do my own dental work. Doesn't mean it is smart to do any of the above.

You say "if we should designate someone in house to do it." I think you might be making a BIG mistake unless that someone is legitimately one of the inventors of the subject invention and is entitled to file the patent application. Does being the inventor matter? In the event that a patent is obtained and litigation follows, it might well. Your 'file wrapper' contains the complete history of the application process. Everything in it WILL be combed over with a fine tooth comb and any mistakes/omissions/ambiguities will be used by the opposition.

Nothing wrong with patent agents. They will save you some money.

The bottom line is that if you ( personally or your company) have an invention that makes commercial sense, unless the inventor know exactly what they are doing, bite the bullet and have an attorney or patent agent prosecute the application. The operative concept above is makes commercial sense. IMO, most patents should never have been applied for because they never had any commercial viability. They are like vanity press books by aspiring authors who can't get a real publishing house to publish their book. But for those patents that are commercially viable, a patent may make sense. And I would personally feel better knowing that the application/file wrapper did not have a bunch of warts in it , that the prior art search had been well done, and that the issued claims were defensible.

Caveat, IANLAPA (I Am No Longer A Practicing Attorney) and the above is not legal advice. Just my $0.02 worth of opinion.
posted by toucano at 7:02 PM on February 1, 2007