The following is a list of questions that I have most frequently been asked over the last 10 years of Patent Practice.  If you have a question that is not on this list, please email me and I will try to answer it the best I can and add it to this list if appropriate.  Note that I do not provide legal opinions (validity, infringement, patentability, and the like) without a fee agreement in place.  Please see our disclaimers page.  The following should not be taken as legal advice, but is for educational purposes only.

 

 

1.    Should I get a Patent?

 

              This is the most commonly asked question.  The best answer for most people is "No".  Although about 95% of all patent applications filed eventually issue as Patents, probably less than 5% of these actually generate income or provide a significant advantage for their owners.  For solo inventors, the percentage is probably even less.

 

              Thus, from a statistical standpoint, it is highly unlikely that you will make money from a Patent filing.  You might as well play the slots!

 

              That being said, whether or not an invention makes money for an inventor depends upon the merits of the invention itself, and also the amount of effort the inventor puts into the invention.  A great invention, no matter how great, will languish for lack of inventor involvement with regard to development, prototyping, and marketing.  Similarly, a mediocre invention will probably not succeed no matter how much it is developed or promoted.

 

              A Patent will not cause the invention to succeed or fail in and of itself.  The Patent will only provide you with ownership rights to the underlying inventive concept.  It may be useful in preventing others from copying your invention or it may be useful when the time comes to sell your invention and business.  However, the Patent, by itself, will not likely make money on its own.  The underlying invention must also have some merit.

 

              For more information, see my article on this topic: Should I Get A Patent?

 

 

2.    I've heard about inventors coming up with great ideas and selling them to companies for millions of dollars.  How do I do this?

 

              The answer is, you probably can't.  The idea that multi-million dollar corporations are just dying to get their hands on some idea developed by the average Joe is an urban legend.  It just isn't true.  Most companies, in fact, try to avoid considering ideas submitted by outside inventors.

 

              This is not to say it can't be done, only that it is difficult and the least likely successful route an inventor can take.  A raw idea that consists of nothing more than an invention "on paper" and a Patent Application are the most difficult thing to market.

 

              Invention Brokers thrive on this myth.  They would like you to believe that your great idea will make you millions of dollars without any significant effort or work on your part.  All you have to do is send them $5,000 to $20,000 and they will do the rest.  Unfortunately, most, if not all, of these companies will simply take your money and leave you with nothing.  They are not interested in stealing your ideas, just your money.  With thousands of "customers" every year, they make tens of millions of dollars per year. 

 

              Making money from inventions is a long shot proposition.  Successful inventors are generally those willing to put the time and effort into developing their inventions.  This involves documenting your invention, building prototypes, marketing the invention, and doing all the door-knocking and promotion yourself.  Very rarely does an inventor succeed simply by filing a Patent application and selling the idea.

 

              The exception to the rule is the so-called "Submarine Patent" filer.  In the past, and even today, there are individuals who file multiple patents on vague and undeveloped ideas.  When other companies come up with products similar to these ideas, these inventors allow their patent application to issue (the Submarine "surfaces") and then sue for damages.

 

              In the past, this was fairly easy to do.  Lawsuits cost a lot of money and many companies preferred to settle for "modest" amounts of money (e.g., $100,000) than wage a legal battle.  However, laws have changed in recent years making it harder to get such "Submarine Patents" and new case law has made it even harder to enforce such patents.

 

              I do not consider it ethical to file for a patent on a vague idea with the express hope that some later inventor will stumble into your claims.  I will not represent any client who appears to be attempting such a strategy.

 

              For more information, see my article on this topic: Not Invented Here!

 

 

3.    How much does it cost to get a Patent?

 

              The lawyer answer is "it depends".  The serious answer is "a lot".  What many people don't realize is that obtaining a Patent is not like filling out a form for your driver's license.  It is not simply a matter of completing some forms and submitting them and waiting for the Patent in the mail.

 

              The reason for this is that the scope of your Patent depends upon how the claims are drafted and how carefully the Specification is drafted as well.  Patent Examiners examine the application, and in about 90% of the cases, reject the claims.  These rejections usually are not serious - it is just the Examiner's way of getting you to argue what your invention is, and more importantly, is not.  This examination process can be confusing to an individual inventor.  However it puts on record what the Examiner and more importantly what the inventor considered their invention to be.  During litigation, these arguments and amendments are usually critical to an understanding and analysis of the Patent.

 

              Unfortunately, there are unscrupulous lawyers out there (and invention brokers) who will file for narrow "picture claim" Patents for solo inventors, figuring that the inventor will never succeed with his invention anyway, so a narrow Patent will not matter.  A "Picture Claim" Patent is so narrow in scope that the Examiner will allow it on a first Action.  Unfortunately, such Patents are easy to design-around to avoid infringement.  For example, one attorney would add a suitcase-type "handle" to each invention (whether it needed it or not!) and claim that handle in excruciating detail in the claims.  If an infringer did not use that exact handle, or left it off entirely, the Patent was not infringed.

 

              If I truly felt that your invention was not marketable or more importantly, not patentable, I would strongly advise you not to file for a Patent rather than content yourself with a worthless "picture claim" type patent.

 

              Thus, if you want a real Patent, with claims of some scope, it is necessary to carefully prepare the Specification, Drawings, and Claims, and prosecute the Patent before the Patent & Trademark Office.  This process can take anywhere from 1-5 years or more.

 

              Your relationship with your attorney is going to be a long term one.  When shopping around for an attorney, get a written price quotation for the cost of preparing the application, prosecuting the application, and also an estimate of issue-related costs.

 

              As the prosecution process is open-ended (see our inventor's information page and our Patent Process Flowchart) it is impossible for any attorney to guarantee a fixed price to "get you a patent".  If an attorney does offer you such a "fixed price" - beware.  In my opinion it would be unethical to do so in the first place (guaranteeing a legal result) and moreover it would motivate the attorney to do as little work as possible to "get the patent allowed" - in other words, narrow claims.

 

              I provide inventors with a five page written price quotation that lists the costs of (a) preparing and filing a provisional and/or formal application, (b) preparing responses to up to two Office Actions (rejections) on the Merits, and (c) a good faith estimate of issue fee costs.  This quote can give you an overall  idea of the total costs involved.  When you see the whole picture from start to finish, it might scare you off, but it is better that you know in advance.

 

              Some attorneys engage in the practice of verbal price quotes.  You'll hear that a Patent will cost "a few thousand dollars" to file.  While you may think this means $2000, the Attorney might be thinking more like $7000.  When the inevitable clash of realities occurs, feelings get hurt.  Moreover, as illustrated above, the mere cost of filing might be less than half the overall cost of the Patent.

 

              Get it in writing.  If an attorney claims them can't accurately quote you a cost in writing, chances are you can't afford that attorney.

 

              That being said, as a "ballpark" estimate, presuming that the invention is a "simple" mechanical one, and the prosecuting is not overly extended (e.g., two Office Actions) the cost of "getting a patent" could run anywhere from $5,000 to $12,000 depending upon the attorney you use.  Note that this is not a price guarantee or price quote for services.  I would have to see your invention disclosure in order to provide you with a price quotation.

 

For sample Price Quotations, see my new Price Quote Page.

 

 

4.  I saw a advertisement on (TV, Radio, Magazine) for an invention company.  They said they could get me a patent and market my invention for less than what you're talking about.  Why isn't that a better deal?  I get my Patent and I get my invention marketed!

 

             Most invention brokers are outright frauds.  They will send you very slickly prepared brochures and books that look impressive at first, until you look carefully and realize that they contain much "boilerplate" language that has nothing to do with your invention.

 

              They will call you in the evening and use high-pressure sales tactics to get you to "sign up" for their service.  It will be difficult, if not impossible, for you to call them.  All you'll get is an answering service.

 

              They will do a Prior Art search for which they pay very little and in turn will charge you a lot.  They will always recommend getting a Patent, regardless of the merits of the invention.

 

              They will pick your Patent Attorney for you and control all communications between you and the attorney.  You will never be told how much the attorney is being paid.  You might not even be told the name of the Attorney!  Although you may pay the invention broker thousands of dollars, the Attorney may receive only hundreds.  The Attorney will use an army of non-legal assistants to "crank out" Patent applications for as little as $50 each.  If you knew that up front, you could save yourself considerable money!

 

              The "marketing" will consist of a two-page brochure that may or may not be mailed out to a mailing list of companies.  That brochure may be displayed at a trade show (along with hundreds of others).  Such marketing tactics rarely, if ever, work.  Most companies routinely throw out such brochures without even looking at them.

 

              Most of these invention brokers have been investigated or are being investigated by various government agencies.  You know what?  In the United States, doing a lousy job and overcharging are not against the law!  Very few of these companies have been seriously punished.  The only line of defense is your skepticism.

 

 

5.  How do I go about getting a prototype built and market my invention?

 

              Beats me!  My specialty is in preparing and prosecuting Patent Applications before the United States Patent & Trademark Office.  Keeping up with that practice demands all of my working hours.  I would be very skeptical of someone who claimed to be an expert Patent Attorney and an accomplished invention marketer.

 

              If you are a real "hands on" inventor, you may already have a prototype built.  If not, you probably know where there are fabricators and small manufacturers in your area that can build a prototype from scratch.  It isn't cheap, but developing an invention rarely is.  Inventor's Digest has advertisements from companies that help in preparing design drawings and building prototypes.

 

              There are also a small number of legitimate invention marketers, however I do not even recommend them.  As an inventor, you probably already know all the "major players" in your field, as well as the trade magazines, retail outlets, trade shows, etc.  If not, then this is the type of information you can develop on your own at little or no cost.  You are more likely to be successful knocking on your own doors or selling your invention yourself than by "handing off' the project to some hired gun who has less of an interest in the idea.

 

              A very few invention marketers will accept an idea for a percentage of profits.  If they want to use your idea, that might be a sign it might have some merits.  But beware, some of these marketers will ask you to pay "expenses" which could end up in the thousands of dollars and may represent the true source of income for the marketer.

 

 

6.    What about Invention Promotion Conventions and Seminars?  What about invention counselors and "how-to" books?   Are they Legit?  Are they of any use?

 

              There are a number of individuals and organizations which run invention promotion seminars, conventions, offer on-line listing services, and the like, for a fee.  From what I can tell, most of these organizations are "legit" in that they clearly advise clients as to what their fees are for their services, and charge only for their services and not the services of others.  These organizations do not try to "bundle" legal services or claim to offer invention promotion services.  They merely provide educational services and a platform from which to market your invention.  In that sense, most of them are "legit".  Some are even endorsed by inventor groups.

 

              However, these organizations are for-profit enterprises and are in business to make money (as I am).  There is no money to be made in telling someone their invention isn't likely to succeed, just as there is no money for the Patent Attorney who provides critical evaluations of inventions.  The difference is, as I see it, is that a Patent Attorney, as a professional, has a duty to advise a client what is in their best interest, not what is in the Patent Attorney's best interest - the fundamental definition of "professionalism", in my opinion.

 

              As you can see from these pages, I try to give inventors realistic evaluations of their chances of success (slim to none) in the invention business.  Promoting an invention is never easy or cheap and paying someone else to promote your invention is the least likely way to be successful.  Hard work on your part, coupled with a great invention, are in my opinion, the greatest harbingers of success.

 

              Seminars on promoting an invention may be useful to you.  However, I am skeptical that displaying your invention at one of these "conventions" either physically or on-line, will be a cost-effective way of promoting your invention, as many of the attendees of the seminar may be fellow inventors, not companies looking for new ideas.  Also, these service companies may not provide critical analysis of your invention, which might dissuade you from paying them money for their services in the first place.

 

              There are many inventions, which are clever and patentable, but are not marketable.  It is not because the invention is not useful or an improvement over a prior design, it is because people may not be willing to pay extra for such a product, or manufacturers may not be willing to re-tool for such a product.  Or, as in many cases with solo inventors, the product is merely a re-design of an existing product that any manufacturer could also re-design in a manner which would probably avoid your patent and still provide the benefits of the design.

 

              Thus, a re-designed closet organizer might be a great idea, and even patentable, but might not be marketable.  There are already a lot of closet organizers out there are the market, and unless yours has some truly unique feature that everyone "must have" (anti-gravity shoe caddy), it is more than likely that you will not find success with your invention, no matter how much you advertise and market it, or how many invention seminars you attend.

 

              A word on Invention seminars and conventions:  I've seen a number of "testimonials" made by inventors attending such seminars and conventions posted by the operators of these companies as "proof" of their success.  However, if you read the testimonials carefully, many do not address whether the invention itself was successful or not, or whether such success was due to the convention.

 

 

7.    I see silly inventions advertised all the time on TV in those "informercials" and in advertisements.  How can I get my invention promoted that way?  Can you  make a lot of money from this approach?

 

              As I noted above, inventions which are just a re-design of an existing product with no real outstanding "must-have" feature are difficult to market and sell.  The exception to this rule is the heavily promoted invention gadget.  A good example of this was the TOPSY TAIL™ invention, which as you may recall was heavily promoted a few years ago by one of those "As Seen on TV" promotion houses.

 

              The invention was a hairstyling wand and was patented.  After heavy commercial promotion on TV, the product made a lot of money for the company and the inventor.  Of course, the Taiwanese knock-off companies started making copies right away and selling them through dollar stores and the like.

 

              I saw the oral arguments in one of the infringement cases on TOPSY TAIL™ at the Federal Circuit.  Despite some decent Prior Art, the patent(s) were eventually upheld and held infringed, but the legal expenses involved were enormous.  I recall the inventor, in a radio interview, being somewhat disappointed in the overall outcome.

 

              TOPSY TAIL™ has come and gone from the TV.  One should not confuse an invention that sells because of heavy promotion, and an invention which sells because of the unique underlying technology.  I would advise the inventor of such a "promoted" item to take the money and run, rather than fight a series of expensive and draining lawsuits.  Once the novelty of such an item wears off, sales drop, and fighting patent battles is a waste of money and time.

 

              The "As Seen on TV" type promotion houses do sometimes seek out inventions to promote.  They run classified ads in Inventors Digest and other venues on occasion.  There are even some that will put on an infomercial for you - at your expense!  However, I was advised by one client that in order to work with such a company, you need to have a ready supply of product on hand.  In other words, they are likely more interested in selling your product, not licensing your idea.  You still have to do a lot of the legwork yourself.

 

 

8.     I saw a book by David Pressman called "Patent It Yourself".  Is this a good book?  Should I buy it?  Why can't I "Patent It Myself?"

 

              I have mixed feelings about the Pressman book.  Somebody had to write it - there should be some sort of instruction manual for the pro se (do-it-yourself) inventor.  However, the legal liabilities in writing such a book are so huge, I wouldn't want to be the one to write it!

 

              And also, I don't think you should "Patent It Yourself", either.  Not because it will put me out of a job, but because you can end up with a worthless Patent.  The patent system is arcane and complex and it takes years of experience to understand it fully.  Some people compare patenting it yourself to doing your own surgery.  I, for one, would not make such a comparison - the work of a Doctor is a thousand fold more important than that of the most important Lawyer!

 

I think it is more like doing your own plumbing repair.  Sure, plumbers are expensive, but even the most experienced home handyman occasionally floods the basement.  Besides, over your lifetime, you may make dozens of plumbing repairs, but chances are, you'll do only one Patent.  There have been successful pro se patentees, but many of them have multiple patents and learned from their mistakes on their earlier patent applications.

 

              The Pressman book is probably good background information, and reading it will help educate you a lot about the Patent system.  However, it is not a substitute for years of experience in the business, and lack of such experience is costly.  Read the book, take a stab at writing your own application - then call a lawyer.  Chances are, your efforts and education will save you a lot of dough.  If you draft your own specification and drawings, no matter how crude, you've saved your lawyer a lot of time, and yourself a lot of money.  A competent attorney can revise and file (and prosecute) such an application for not a lot of money (as compared to doing it from scratch).

 

But by no means, do not try to "Patent It Yourself".

 

Why?  Well the problem is that you could make a mistake in writing or prosecuting the Patent application that could make your resulting patent worthless or unallowable.  Mistakes I commonly see are:

 

1.  Inventors who do not disclose all of the invention (trying to keep part of it "secret") which can result in a "fatal" 112 rejection

 

2.  Inventors who fail to disclose all relevant Prior Art and end up with a Rule 56 violation (fraud on the office)

 

              3.  Inventors who draft poorly written claims which are so narrow in scope that they provide no meaningful protection

 

              4.  Inventors who get frustrated or discouraged when they get a rejection and give up too easily

 

              5.  Examiners who suggest very narrow claim protection to Inventors to "allow" the case.

 

              The last item is the most troubling.  The MPEP (Manual of Patent Examination and Procedure) instructs Examiners to suggest claims to pro se applicants to get the case allowed.  Unfortunately, Examiners will suggest very narrow claims, either to satisfy their own needs, or because they lack the foresight an attorney has as to how such claims will be viewed in court.

 

              Most Examiners (like most attorneys) view pro se applicants as a nuisance and don't believe their inventions will ever be successful.  They suggest narrow claims to get the inventor "out of their hair".  The inventor, not knowing any better is happy that his patent is "allowed" even though he doesn't realize that it may be of little value.

 

              In many instances, broad patent protection has to be hard fought and hard won.  What the Examiner is willing to hand to you often isn't worth paying the issue fee on.

 

              PLEASE NOTE:  As a matter of policy, I cannot take on representation of an inventor who files their own provisional and/or formal application pro se and then asks me to clean up the mess when they get a rejection from the Patent Office (or find that drafting claims is a lot harder than it sounds!).  There are two sound reasons for this policy:

 

              1.  If I encourage inventors to file their own Patent Applications and then come to me for help, I certainly am shooting myself in the foot business-wise, aren’t I?

 

              2.  Trying to “rescue” badly written pro se applications is a liability nightmare.  If I can salvage the case, I certainly get none of the credit, and if I cannot, I surely will get all the blame.  Who wants to get sued over a Patent Application that they never wrote (and were never paid for?).  Risks have to be tied to rewards.

 

              So, if you want to “go it alone” then you have to “go it alone”.  You can’t file your own Patent Application and then come to me for help when it all goes horribly wrong.  (Sorry!).

 

 

9.     What about those "Do it Yourself Provisional Patent" kits?

 

              See my advice above.  A Provisional, while not examined, is subject to the same standards under 35 USC 112 as a regular application.  Thus, if your invention is not properly disclosed, you leave nothing for an Attorney to work with when the time comes to file a formal application.

 

              As I noted above, if you draft your own application (don't bother with claims, that's what an attorney is for) a competent attorney can review and file it for you for not a lot of money.  In fact, it could be very, very little money, depending upon the invention and your work.  I think the peace of mind from such an approach is well worth the money, and a far better approach than trying to file the application yourself and then trying to find an Attorney.

 

              Patent Office filing and issue fees for a patent application are well over $1000.  It is not worth paying these fees unless the Patent is worth something.  So, trying to “save money” by filing yourself is really short-sighted.

 

              A recent twist on the “do it yourself provisional” is the “Patent Drafting Software” scheme.  One website purports that you can “draft your own Patent Application” with their $400 Patent Drafting Software.  However, if you read their website carefully, they suggest that you have a Patent Attorney review and file your application for you.  And - surprise! - they just happen to have a Patent Attorney to recommend to you!   How convenient (for them!).

 

              The reality is, the “software” company is really a Patent Law Firm using the software gag to attract clients, and then offering to bail them out when they inevitably get into trouble trying to prosecute their Patent Application with the Patent Office – all for a fee, which was not negotiated ahead of time.

 

              Again, drafting your own application can save you a lot of money.  But choose an attorney up-front to review and file your application and also prosecute the case – and get a written price quote up-front as well.  Don’t fall for the “patent it yourself software” trap.  The $400 you spend on the software is better spent on your filing fee.  You need only a paper and pencil to draft a Patent Application (or a word processor).  You do not need “software” to write text.

 

 

10.     You've given a lot of advice on why I shouldn't get a Patent.  But why do people get Patents?  What good are they?  Why should I get one?

 

              As I noted before, a Patent is not a license to print money.  Chances are, the Patent by itself will not make you money - your invention might, but the Patent will likely not, at least in a direct way.

 

              What a Patent can do for you is prevent someone from ripping off your idea after you have spent much time and money developing and marketing the invention.  In other words, the Patent can provide you with some protection for your idea, but it will not likely be the nexus of success of your idea - the invention itself will provide that success.

 

              This is where people can become misdirected or lost in the Patent process.  Too often inventors think the Patent is the big deal - once the Patent issues all sorts of good things will happen.  But this is usually not true.  Once the Patent issues, you have a Patent, period.  Unless your invention is so necessary to everyday life that people have to have it, chances are folks will continue using the same old products and inventions they were using before yours came along.

 

              You will most likely have to promote and develop your invention if you expect it to be successful, and these tasks are expensive and time consuming.

 

              Even for inventions that are real "must have" products, invention development is never easy or cheap.  I have made a hobby of reading inventor biographies and histories of invention development.  Alexander Graham Bell (no relation) had an extraordinarily difficult time developing his invention - the telephone.  Since each phone set was leased, the revenue from telephone rentals was not sufficient to pay for the expenses of setting up an entire phone system and manufacturing all of the necessary equipment.  As a result, Bell had to sell off larger and larger percentages of his company to investors in order to finance development of the invention.  Eventually, he ended up with only a minority share, and sold much of that early on, as the advice of his wife, who was sure that the stock had "peaked" in price.  The Bell system continued on without him, his only connection being the company name and his remaining minority shares.  Today, even that name is gone.

 

              The Wright Brothers had similar problems.  They had the mistaken impression that their "Flyer" was so unique and extraordinary that people would be willing to pay upwards of $50,000 a copy - a king's ransom at the time.  Rather than sell many at a good profit, the Wrights wanted to sell only a few at huge profits.  The problem was, others such as Glenn Curtiss and Farman had also developed working flying machines at about the same time.  The Wrights sold few machines and ended up in a protracted Patent battle with Glenn Curtiss, which consumed much of their time and energy.  World War I forced a settlement of many of these legal battles.  Within a few years, the Wrights were also forced out of the business they helped create.  Today, no on flies on a "Wright" brand airplane anymore.

 

              I could go on and on, as the examples are many (Armstrong, Lear, and the like).  The point is, it is selling product that generates revenue, not getting a Patent.  Only very rarely is an inventor able to license a "raw" Patent and make a fortune.

 

              It is also interesting to note that inventors rarely, if ever, are the ones who make the lion's share of money from their invention.  Businessmen and financiers make substantially more on an invention than an inventor ever will.  Henry Ford and Bill Gates were not "inventors" of the products for which they are famous.  They made money by producing these products efficiently and through aggressive marketing.  Carnegie and Rockefeller made their billions without inventing anything.

 

 

11.    I have come up with a new product, but I am concerned that there are a lot of similar products on the market.  How can be sure I am not infringing someone's Patent?

 

              Yours is an interesting question.  The short answer is: you can’t.  There is no 100% reliable foolproof way of avoiding being sued for Patent Infringement.  There are steps you can take to minimize exposure to a suit, but no 100% foolproof way of avoiding any suit.  That is the nature of any business - risk-taking.  If you are not prepared to take managed risks, then you should not be a businessman.

 

              The problem is, it may be hard or impossible to find all relevant Patents that might affect your business.  Searching Patents is not an exact science.

 

              If a Patent is "pending" it is kept secret for 18 months, then it might be published.  Some are not published (it is an opt-out system) others filed under the old rules (pre 2001) are not published, period.  So it is possible that a patent may be "pending" that you don't know about.  If this product has been on the market for several years, the likelihood of it being "pending" diminishes accordingly.  But some Patents take 5, 6 or more years to issue.  So you may never have a concrete answer whether one of your competitors has filed for a patent or not.

 

              If no one is marking their product "patent pending" or "U.S. Patent No. X,XXX,XXX", that is a good sign that they might not have a patent pending or issued on the product – but it is by no means determinative!  It is in their best interests to mark their product for litigation purposes (and also to scare off competitors).  However, marking is not required, so this is not 100% determinative, either.  So lack of a Patent marking on a product does not mean you can copy that product at-will.

 

              A Prior Art Search may determine whether a Patent exists that covers your product.  If it is quite old, the Patent may be expired, in which case the invention may be in the "public domain" and may be freely copied (but not any trademarks or trade dress, however).  BUT, Patent Searches are never 100% reliable either, so a search that fails to turn up a relevant patent is not a "clean bill of health" by any means!

 

              My suggestion would be to do an on-line search yourself (see my web page for instructions) or hire a searcher to do at least a background search (about $500 or so, and I could do this for you or refer you to a searcher).  Such a search is not as complete as full-blown "infringement study" which may run into the thousands of dollars.   But it can be a good form of insurance (and put your mind at ease), and help you avoid "willful infringement" charges if a Patent later surfaces.

 

              Actually, enforcing a Patent is a lot more difficult that it looks.  If you are only selling $100,000 worth of product a year, it may not be "worth it" for someone to sue you for infringement.  A Patent holder may only be able to sue you for damages from the date of issue of the Patent AND from the date of "notice" of the Patent (actual or "constructive" notice, the latter being from marking the product).  So it is possible that a competitor with a Patent on your product may just ask you to take a license on reasonable terms.  But there is no guarantee of this, and a vindictive competitor might try to force you out of business with an injunction.

 

              Again, running a business is all about risk-taking.  If there were no risks, there would be no rewards.  So be sure you make a tidy profit from your product, as you are taking on a lot of risk.

 

 

12.    Do you take Patent Cases on Contingency?

 

              Short Answer:  NO.  Why?  Well to begin with, taking contingency fee cases or taking an interest in a client’s patent creates all sorts of conflict problems – which can be resolved, but can lead to difficulty.  In addition, since it can take 3-5 years (or more) to get a Patent, an awful lot of work would have to be done before any potential reward could be realized.  And finally, most Patents (perhaps 98% or more) never generate any profits for their owners.  So taking a case on contingency would be a sure way for an attorney to go broke.

 

 

13.    I received a notice in the mail from the “Official U.S. Patent Renewal Agency” stating that a renewal fee is due on my Patent.  Should I pay them directly?  Why would I need to use an attorney for this service?

 

              To begin with, the “Official U.S. Patent Renewal Agency” is NOT an arm of the Federal Government, but rather a group of con-men out to get your money.  For the $125 fee they request, they will agree to send you the FORMS necessary to pay your maintenance fee (which is at least $450).   Read the very, very fine print on the back of their card.   I have had clients fall for this trap, only to find out later that their Patent has now expired for failure to pay the maintenance fee, and that they have also lost $125 in the process.

 

              You can download the Maintenance Fee payment form from the USPTO website here, or pay the fee yourself online here.   Our fee for preparing and filing maintenance fees is $175 (at the time of this writing, March 2009) plus the actual fee and related expenses (postage, photocopying).  PTO fees are adjusted every October (usually increased).  For the latest maintenance fee schedule, see: USPTO FEE PAGE

 

              I recently received a communication from a Trademark Client, saying that they had received a letter from the “Official U.S. Trademark Department Agency” requesting a $375 fee to obtain a Trademark.  Again, this is not an arm of the United States Patent & Trademark Office, but rather a front for con artists.

 

              If you apply for a Patent or Trademark, expect to receive some mail from friendly, helpful folks who want to “help” you.  Since your address is published on the Patent or Trademark Application, they can download that information from the Patent Office website.  Some are merely trying to sell you a commemorative plaque of your Patent, while others will claim to know people interested in licensing your Patent – for an up-front fee, of course!

 

              Be skeptical.  Official communications from the United States Patent & Trademark Office (Department of Commerce) will be labeled as such, not as the “Official U.S. Patent Agency” or some such nonsense.

 

              And think carefully about doing business with someone who uses a ruse or con to get you to open their package or letter.  If the business relationship is based initially on a deception (appearing to be a government agency when they are not) where will it go from there?

 

 

14.    Your website is pretty crappy looking.  Why don’t you have a professionally designed website?

 

              You’d be surprised how many times I get this comment.  People have no manners these days, I guess.  The answer to the question is quite simple: I have enough business as it is, and I don’t need or want a fancy website to attract new clients.  The types of clients who are impressed by fancy graphics (and no real content) are not the clients I want, anyway.

 

              The typical big law firm website may have some nice graphics, firm biographies, and not much else!  Most Attorneys are paranoid about being perceived as “giving out legal information over the Internet” that they remove any useful content from their site.  As a result, most Patent Lawyer websites are pretty-looking, but also pretty useless.

 

              The content of this site should NOT BE CONFUSED WITH LEGAL ADVICE, which is situation and fact-specific.  However, these EDUCATIONAL MATERIALS can be useful to you in learning about the Patent system.  Educating yourself  requires that your READ, however.  Reading and understanding is hard work.  If you are willing to READ the materials here, you will find a lot of useful information and can save you a lot of time and money.

 

              Fancy graphics rarely teach anything, I’m afraid, although they do look cool.  I first started this page in the 1990's, when most law firms did not have websites.  Today many firms still do not have sites, or if they do, they are imposing looking things that are cob-web sites (usually) that might have contact information and the occasional firm biography.  Many Attorneys do not want to put any useful information on their websites for feat it will be deemed "legal advice" and also because they want clients to call with lots of questions to generate billable hours.

 

              The other reason why I don’t use a “professional” web designer is that I like to control the content of my website and change it often.  If I have to hire someone to change the HTML every time I want to update the site, it defeats the entire purpose of the site.

 

              Also, I believe (strongly) that the “personal” computer and the web should be people-based systems, not expert-based systems.  If we revert to a community of passive viewers (and not content creators) then the Web becomes little more than a fancy version of broadcast television.  Doing my own HTML is educational and helps me better understand some of the challenges in this art.

 

              My website is primitive, home-made, and homespun, but then again, so am I.  I think it more accurately reflects who I am and gives you a better idea of where I am coming from than a site designed by a 3^rd party.

 

15.    You seem to spend a lot of time in Florida or travelling.  What’s up with that?

 

              On of the joys of being self-employed is being able to schedule your work time when YOU want it, not according to some 9-5 M-F schedule dictated by others.  Clients are surprised that I am often hard at work late at night or early in the morning or on weekends or holidays.

 

              When you are self-employed, there is no such thing as a “weekend” or “holiday” except when you decide to have one.  I find that taking time off during the week is much more efficient, as stores, attractions, and other areas are largely deserted by the regular population of weekend warriors.  “Time-shifting” results in a much more efficient use of your personal time and a much more enjoyable experience, as well.

 

              In the past, I took much time off to travel the country in our Motor home.  Recently, we sold the motor home and purchased a condominium in Florida, which is now my primary residence.  We also maintain a summer lake home on Cayuga Lake, New York, north of Ithaca.  IN 2006, beofre the housing bust, we sold our Florida properties and settled in Jekyll Island Georgia, which is our residence.  We still spend the summers in New York, at least for the time being.  Our long term goal is to eventually sell the New York property (high taxes) and travel more.

 

              One problem I see in the Patent business is that many Patent Attorneys suffer from depression – and deep depression at that.  The problem is also epidemic at the Patent Office.  One reason I think this occurs is that Patent Practitioners spend huge numbers of hours working at the Office in what seems like a never-ending stream of Patent Applications.  After a while, it is quite easy to get “burned out” and stop caring about the work.

 

              I see this all the time with Attorneys representing solo inventors.  They get burned out and come to believe that these inventors will never succeed in their inventions.  As a result, they do only a superficial job of prosecuting the cases – wanting more to get the case off their desk than to obtain a broad scope of protection.

 

              This is a shame, as I have seen many solo inventors make quite a lot of money from their inventions – and they don’t deserve to be short-changed in the Patent Process.

 

              The only solution, as I see it (other than pharmacological) is to introduce variety into your life.  60-80 hours a week of Patent Applications for 50 weeks a year is enough to drive anyone crazy in a short period of time.

 

              I try to spend about one week a month on my boat in Florida.  It’s not a fancy boat or a big one, but you really don’t need all that to have fun and relax.  I find this technique allows me to produce MORE, as well as draft BETTER quality Patents, as I am not a slave to the “grind” of a regular workweek.  I’d rather work weekends and holidays for 3 weeks in a row and take a whole week off, than to work what seems like a never-ending schedule with only enough time on the weekends to gas up your car.

 

              Also, having frequent travel plans acts to motivate me to get cases completed before I go.  Everyone needs deadlines – without them, no work would get done!

 

 

16.    It is possible to meet with you in person?  How can I work with an Attorney who is not local to me?

 

              This is a good question.  I often advise clients to use a local Patent Attorney if they can find one that is competent and reasonably priced.  However, given the relatively small number of Patent Attorneys practicing, this is not always practical.

 

              About 95% of my practice involves clients who are not local to me, and I probably never meet 75% of my clients in person.  This has not been a great difficulty for me so far, but if this presents comfort problems for you, I understand completely.

 

              To date, I have represented clients in Virginia, Maryland, D.C., Florida, Texas, Arizona, California, Wisconsin, New York, Minnesota, Massachusetts, North Carolina, South Carolina, Mississippi, and Michigan, just to name a few.  Oddly enough, some of my “local” clients, including some just down the street, I have never met.  On the other hand, I have met many “away” clients on occasion during my travels.

 

              I have represented overseas clients from Hong Kong, Australia, Sweden, Japan, Taiwan, Yemen, England, and Slovenia, just to name a few.  I have had a chance to meet many of these clients on occasion, but many others I have never met face to face.

 

              On advantage I had over some local Attorneys is that I used to be local to the Patent Office.  In the past, this was an advantage to me, as I could file papers, perform searches, and meet with Examiners on a regular basis.  Also, I think it helped me to keep up on Patent Office changes (of which there are many!) better than if I was away.

 

              However, with the move to electronic filing, telecommuting (even for Patent Examiners) and the increased use of the Internet, this advantage has faded away.  In the Spring of 2005, I had a chance to sell my home in Alexandria, Virginia during the height of the Real Estate bubble, and buy a home on 5 acres on Cayuga Lake in the Finger Lakes region of upstate New York.  Since most of my work is performed over the Internet, and since the Patent Office is moving to electronic filing, it just does not make economic sense anymore to pay high prices for housing in crowded and congested urban areas, especially if you can live on a lake, instead.

 

              If you would like to arrange an in-person interview, this certainly is possible.  However, for me to fly out and meet a client can be prohibitively expensive.   I do fly out to meet with some larger clients on a regular basis (at my own expense).  To me, this is worthwhile if I am drafting 50-100 applications for that client.  But for a solo inventor, such travel is just not cost effective.

 

 

17.    What is the difference between a DESIGN and a UTILITY Patent?  What is a Provisional Patent?

 

              I have a detailed article about this subject.  CLICK HERE to read it.

 

 

 

 

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