The Legal Side of Inventing

 

Filing a patent can be one of the most important steps an inventor takes.  It is important that legal documents such as patents and licenses are constructed in such a way as to protect the rights of the inventor. There are three ways to file a patent:

·        Pro Se (without legal counsel)

·        Patent Attorney

·        Patent Agent

PRO SE

 

Ø      Can inventors file a patent for themselves?   The USPTO Web Site states: "Inventors may prepare their own applications and file them in the Patent and Trademark Office and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may get into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention."

 

Ø      If inventors choose to file for themselves, what are they responsible for?   While the patent application process is cumbersome and complicated, it is not impossible to successfully navigate by inventors representing themselves.  When an inventor elects pro se prosecution, he or she is responsible for complying with all of the laws, rules and administrative procedures of the US Patent Office, and is responsible for the content and coverage of the issuing patent.  The process has many "opportunities" for an unwary applicant to lose all or some of his or her patent rights forever and irreversibly. 

 

Ø      Is there any help for inventors choosing to file on their own?   If you are considering pro se prosecution, here are some references and tools you may want to obtain and review before filing your application:

·        General Information on Patents, available free on-line at the USPTO web site http://www.uspto.gov, or in print from the US Government Printing Office for a fee.

·        Title 35 United States Code (35 USC), the "patent laws", available free on-line at the USPTO web site http://www.uspto.gov, or in print from the US Government Printing Office for a fee.

·        Title 37 Code of Federal Regulations (37 CFR), the "patent rules", available free on-line at the USPTO web site http://www.uspto.gov, or in print from the US Government Printing Office for a fee.

·        The Manual of Patent Examination Procedure (MPEP), available free on-line at the USPTO web site http://www.uspto.gov, or in print from the US Government Printing Office for a fee.

·        Patent It Yourself, by David Pressman, Patent Attorney, approximately $45.

·        The Patent Drawing Book, by Jack Lo, Patent Agent, approximately $30.

 

PATENT ATTORNEY

 

This information is an excerpt from a pamphlet, entitled Lawyers and Legal Fees, and was prepared as a public service by the Oklahoma Bar Association to inform citizens of their legal rights and obligations. It contains general information and is not intended to apply to any specific situation. If you need advice or have questions about the application of the law in a particular matter, you should consult a lawyer.

 

Ø      What should I expect when I hire a lawyer?  You are hiring a lawyer to work for you as your advocate or adviser. You should expect your lawyer to:

·        confer with you to pinpoint the problem

·        advise you of your rights and responsibilities

·        be candid with you about your problem, your prospects for success, the time it will take and the advisability of accepting any settlement offered

·        research and analyze all available facts and information relating to your problem

·        represent your interests in and out of court

·        prepare appropriate legal documents

·        prepare legal arguments for presentation in court, if litigation is involved

·        negotiate a settlement (when possible and advisable)

·        act with reasonable diligence and promptness

·        keep you reasonably informed about the status of your case

·        return your telephone calls and answer your questions or concerns

·        discuss courses of action, alternatives or consequences

·        follow your decisions, after advising you of possible actions to take

·        discuss fees with you at your first visit, and reach an agreement

·        confirming specific arrangements

·        hold in confidence your confidential communications

·        exhibit the highest degree of ethical conduct

 

Ø      What will my lawyer expect from me?  Upon being retained by you, your lawyer shall expect you to:

·        be on time for appointments and not take up an excessive amount of time with visits or phone calls relating to minor details or petty matters

·        discuss all the facts of the matter and not withhold information about the case

·        bring necessary information and documents to the first appointment

·        notify the lawyer of changes or any new developments including changes of address or telephone number

·        ask questions to clarify anything that may confuse you about your case

·        follow your lawyer's advice

·        understand that no lawyer can guarantee results in a contested matter

·        be patient and understand that legal matters are rarely "open and shut" cases -- they require time and research

·        pay a reasonable fee for the work performed

 

Ø      When should fees and costs be discussed?  It is appropriate -- and important -- to discuss fees upon your first visit with the lawyer. You have a right to know how you will be charged, an estimate of how much the case is likely to cost, and when you have to pay.  Various factors and arrangements may influence the costs of legal services.  Your lawyer can explain how fees are computed and may outline options available to you. The lawyer can sometimes provide a reasonable estimate of the time and costs involved in serving your particular needs. Your lawyer will want you to be satisfied not only with the service provided, but also with the fee you are charged. Candid discussions about fees and your ability to pay will avoid misunderstandings, while helping you decide if you want to retain the lawyer.

 

Ø      How are a lawyer's fees determined?  The rules that regulate the ethical conduct of lawyers state that all fees must be "reasonable."  Along with fair and competitive fees, lawyers strive to provide service at rates commensurate with the skill required and the results obtained.  Three common methods of determining fees are:

·        time (usually based on hourly rates);

·        contingency (based on the outcome of the case); and

·        flat fees (for specific action, such as handling a real estate closing).

 

Ø      What factors are involved in computing charges?  Although exact fees cannot usually be determined in advance, the factors involved in computing charges are fairly standard. These factors include:

·        Time spent on a particular problem. Time is a basic element in determining professional fees. For many matters, a straight-time hourly fee agreement will be arranged. Different lawyers value their time at different rate because of variations in experience, training, skills and law office expenses. Most lawyers keep accurate records of time spent on each matter. Assistance from other lawyers, legal aids and clerical staff also affects costs.

·        Amount charged in a locality for similar legal services.

·        Lawyers usually bill for consultation (including phone consultations), meetings, document preparation, client representation in court, research of legal issues and for other work that directly relates to a case. These charges should be itemized or explained to you.

·        Legal services, unlike medical or dental services, are often performed when the client is not present. Documents and advice are frequently the products of many hours of analysis, research and preparation.

·        Ability, experience and reputation. Circumstances or unique problems sometimes require special services. You should expect to pay more for a lawyer with proven abilities whose expertise in a specific area of law is in demand.

·        Overhead and operating expenses. When hiring a lawyer, you hire all the resources of a law office to work on your behalf. For a typical law office, overhead and operating costs (including such items as rent and utilities, professional and support staff, law libraries, equipment and supplies, and taxes and insurance) may comprise 35 to 60 percent (or more) of legal fees.

·        The results obtained. In some cases, the outcome and the amount involved may determine a fee. A "contingent fee" agreement, often used in personal injury or collection cases, is one example. No lawyer can guarantee results of a court proceeding. If a contingent fee has not been arranged, the lawyer will expect to be paid whether the client wins or loses the case.

·        Time limitations imposed by the client or by the circumstances of the matter may also influence fees.

·        The seriousness and complexity of the legal problem will also affect fees.  If the problem involves established legal principles requiring routine skills and attention, a straight-time fee may be appropriate. However, if the problem raises difficult or novel questions of law, larger fees may apply.

·        A client's ability to pay may influence fees. Payment plans can often be arranged or legal aid might be available. Be sure to discuss these concerns prior to hiring an attorney.

·        The attorney-client relationship must also be considered. With a continuing relationship the charge for a particular matter may be less than if employment is on a one-case basis.

·        A client should also realize the employment for his case may preclude a lawyer and the associates from accepting other representation which conflicts with the client's interest.

 

Ø      Should I expect to pay an initial consultation fee?  Policy and practices vary. Don't hesitate to ask about the initial consultation fee when calling for an appointment with a lawyer. Some lawyers have a policy of 'no charge for the initial consultation,' while others charge for a client's first visit.  If after an initial visit you decide not to take further action, you are under no obligation to proceed, but you will be expected to pay for the initial visit unless you are advised or promised otherwise.

 

Ø      Is a written fee agreement necessary? A clear understanding of fees is important to the attorney-client relationship. No matter which fee arrangement you agree to, you should ask for a written agreement. An agreement in writing is required for any contingent fee arrangement. As with any contract, the agreement should be carefully read and understood before being signed, and all parties should keep a copy of it.

 

Ø      When is the fee payable? In many cases, a lawyer will require a deposit before agreeing to handle your matter. Such payment can assure the lawyer's availability and may be applied to initial work and expenses. (Lawyers follow strict regulations for the safekeeping and accounting of these deposits and all client funds.) Depending on the circumstances, an initial payment may be considered a retainer, an advance, a down payment or a deposit. Clients in need of continuing legal services (usually businesses) sometimes pay monthly or annual retainers.  Fee arrangements vary depending on type of service, personal preferences, and lawyer practices and policies, so be sure you understand your options and obligations when your case is first discussed.

 

Ø      What if I think the fee is too high? If you have questions about a bill, contact your lawyer and discuss it. Most lawyers maintain detailed records of time spent and expenses associated with each case and can itemize or thoroughly explain any charges you think are confusing or improper. If you believe your lawyer has acted improperly, you may contact the Oklahoma Bar Association or your local bar association for more information about your rights.

 

Ø      Can I do anything to reduce legal expenses? Lawyers are professionals with many qualifications and years of training. Time and advice are their stock in trade, so they must charge for them. By following a few suggestions, however, you can help reduce legal costs:

·        Gather pertinent information before meeting with your lawyer. Write down the names, addresses and telephone numbers of all persons involved in the matter.

·        Be organized. Bring letters, documents and other relevant papers to the first meeting with your lawyer. Summarize essential facts.

·        Write down questions you want the lawyer to answer.

·        Be concise in all interviews with the lawyer.

·        Answer questions fully and honestly. Be accurate and objective. Reveal all information, even if it may not be in your favor, and avoid letting emotions color the facts.

·        Avoid unnecessary telephone calls to the lawyer.

·        Be informed and keep your lawyer informed. Discuss ways you can help, such as by obtaining documents, lining up witnesses or providing other assistance to reduce costs.

·        Consider "bottom line" or financial aspects of a legal matter and discuss them with your lawyer. Be sure you understand advantages and disadvantages of a proposed action (for example, would court costs and legal fees be more than the amount of a bad debt you would like to recover?).

·        Try to prevent problems by contacting a lawyer before committing yourself to a major obligation.

 

Source: http://www.okbar.org/publicinfo/brochures/lawyerbroc.htm

 

PATENT AGENT

 

This information is provided courtesy of Robert Frantz, Registered Patent Agent

 

Ø      What about patent agents?  The patent office allows attorneys and non-attorneys to practice patent law in order to balance the legal aspects of the patent process with the technical aspects.  Most other countries, such as England and Canada, have similar systems.  To be registered to practice patent law as a patent attorney, an attorney must take and pass the "patent bar examination" and he or she must have passed the local state bar exam, as well.  To be registered to practice as a patent agent, most agents have also taken and passed the same "patent bar examination" and have an engineering degree from an accredited university.  Some patent agents are former patent examiners, and have not been required to pass the patent bar exam but have received training by the USPTO.

 

Ø      What can a patent agent do for an inventor?  In all matters before the patent office relating to obtaining a patent, including rendering of patentability opinions, drafting the patent application and prosecuting it through the examination, patent agents and attorneys are equally qualified and recognized by the USPTO.

 

Ø      What services are patent agents barred from performing?  Since patent agents are not attorneys, they are not allowed to represent their clients in matters that come before state court and federal court jurisdiction, such as the writing of license agreements and bringing suit for infringement.  Likewise, since most attorneys are not registered Professional Engineers and are not licensed to practice engineering, most attorneys are not allowed to consult with their clients regarding design changes, implementations, etc. 

 

Ø      How do I decide to use a patent agent or patent attorney? Ultimately, the choice of who to retain as your patent legal representative should be based on several factors:

·        Is he or she registered to practice patent law before the USPTO?  Ask  if he or she is an attorney or agent and how many patents he or she has successfully prosecuted through to issuance.  Also, ask how many years of patent practice he or she has, and ask for a percentage breakdown of litigation versus patent application preparation and prosecution.

·        Does he or she have a technical background which lends itself to the invention at hand?  Ask what kind of engineering degree he or she holds and how many years of design experience he or she has.  Also, ask if he or she has any patents on which he or she is the inventor.

·        Has he or she been the subject of a complaint, censor, or suspension by the USPTO Office of Enrollment and Discipline or the state bar?

·        Perform a search on the USPTO web site to see if he or she is in fact registered (look at the roster of agents and attorneys), and perform a search for patents which he or she has prosecuted (LREP/attorney_name).  This will verify his or her standing as an agent or attorney, and will give you an idea of the types of patents he or she has worked on in the past.

·        Get a full estimate of legal professional fees and USPTO fees in writing before starting the process.  Cheaper is not always lower quality, and more expensive is not always higher quality.  This estimate should include:

ü      The cost for a patentability search (optional)

ü      Rendering of a patentability opinion (optional)

ü      Drafting of the patent application including figures and the description

ü      USPTO filing fees

ü      Agent's or Attorney's fees for preparing responses to the first and subsequent  Office Actions

ü      USPTO issuance fees

ü      USPTO maintenance fees (not applicable to design patents)

·        Get a commitment from the attorney or agent on a deadline for preparing your application.  Make sure your application will have priority and will not be handled with less urgency than the firm's corporate client's business.