Getting the Help You Need with Your Patent
By Alexander Poltorak
The first issue every inventor must consider if whether or not to patent the invention. And should you seek professional assistance in prosecuting (the process of filing a patent application and getting it approved is known as “prosecution”), or should you do it yourself.
The law allows an inventor to file and prosecute a patent application directly without professional representation (in legal parlance this is referred to as “pro se” which is Latin for “for himself” or “by oneself”). However, filing a patent application without the assistance of a patent attorney or patent agent is the biggest mistake an inventor can make! Applying for a patent without the assistance of a patent practitioner is roughly equivalent to performing surgery on yourself by looking in a mirror. In my 22 years representing inventors in patent licensing and patent enforcement, I’ve seen fortunes lost because an inventor filed and prosecuted a patent pro se, instead of hiring a professional do to it for him.
Getting a patent doesn’t come cheap. Expect to spend about $5,000 for a simple mechanical invention, $10,000 for an electronic or software invention, and $15-$20,000 if your invention is in biotech or involves complicated technology. For many independent inventors, this is a lot of money. However, lack of funds is not an excuse to try to do it yourself. A patent application that is not prepared by a professional is rarely worth the paper it’s printed on. Even if you manage to convince the Patent Office to grant you a patent, in all likelihood it will not be enforceable in court. Remember, a patent is nothing more than a license to sue. Therefore, a patent that cannot be effectively enforced in court is not worth having. The moral of this is, if don’t have the money to hire a professional, don’t waste your time trying to get a patent. Your filing, issue and maintenance fees will be wasted money.
There are two types of professionals that can help you to get a patent: a patent agent and a patent attorney. Both patent attorneys and patent agents are admitted to practice before U.S. Patent and Trademark Office (USPTO). Both have the technical or scientific background required by the Patent Office so they can sit for the Patent Bar exam. However, patent attorneys also have a law degree, passed a state or the DC bar exam, and are members in good standing of a state or the DC bar association. Patent agents, on the other hand, are scientists or engineers who passed the patent bar exam and admitted to practice before USPTO, but they are not attorneys.
Both patent agents and patent attorneys can draft and prosecute a patent application. Patent agents, however, cannot help you to enforce your patent because they cannot represent you in court. For that you need a patent attorney, and patent attorneys are generally more expensive than patent agents. Remember that getting a patent for your invention is just the beginning. If you invented something of value to others, it is likely that someone will infringe your patent, and you will have to enforce your patent rights in court. Here is where your patent will be tested.
To find a patent attorney or an agent is not difficult. You can try your local Yellow Pages or you can ask for a referral from other inventors who were pleased with the service they received from their patent practitioner. Or you can use the free, on-line Patent Attorney – Patent Agent Referral Service operated by General Patent Corporation.
Before spending your life savings (or, worse yet, your in-laws’ live savings) on getting a patent, remember that you do not need a patent to practice your own invention. Nor will the patent necessarily grant you that right. A patent is a right to exclude others from practicing your invention. That is, a patent gives you the right to sue for patent infringement. Unless you intend to enforce your patent should it be infringed, don’t bother applying for a patent, and save your money.
Alexander Poltorak is a Certified Licensing Professional and CEO of General Patent Corporation, the oldest patent licensing and enforcement firm in the US. Dr. Poltorak is an expert on patent enforcement, patent infringement and patent licensing.
The first issue every inventor must consider if whether or not to patent the invention. And should you seek professional assistance in prosecuting (the process of filing a patent application and getting it approved is known as “prosecution”), or should you do it yourself.
The law allows an inventor to file and prosecute a patent application directly without professional representation (in legal parlance this is referred to as “pro se” which is Latin for “for himself” or “by oneself”). However, filing a patent application without the assistance of a patent attorney or patent agent is the biggest mistake an inventor can make! Applying for a patent without the assistance of a patent practitioner is roughly equivalent to performing surgery on yourself by looking in a mirror. In my 22 years representing inventors in patent licensing and patent enforcement, I’ve seen fortunes lost because an inventor filed and prosecuted a patent pro se, instead of hiring a professional do to it for him.
Getting a patent doesn’t come cheap. Expect to spend about $5,000 for a simple mechanical invention, $10,000 for an electronic or software invention, and $15-$20,000 if your invention is in biotech or involves complicated technology. For many independent inventors, this is a lot of money. However, lack of funds is not an excuse to try to do it yourself. A patent application that is not prepared by a professional is rarely worth the paper it’s printed on. Even if you manage to convince the Patent Office to grant you a patent, in all likelihood it will not be enforceable in court. Remember, a patent is nothing more than a license to sue. Therefore, a patent that cannot be effectively enforced in court is not worth having. The moral of this is, if don’t have the money to hire a professional, don’t waste your time trying to get a patent. Your filing, issue and maintenance fees will be wasted money.
There are two types of professionals that can help you to get a patent: a patent agent and a patent attorney. Both patent attorneys and patent agents are admitted to practice before U.S. Patent and Trademark Office (USPTO). Both have the technical or scientific background required by the Patent Office so they can sit for the Patent Bar exam. However, patent attorneys also have a law degree, passed a state or the DC bar exam, and are members in good standing of a state or the DC bar association. Patent agents, on the other hand, are scientists or engineers who passed the patent bar exam and admitted to practice before USPTO, but they are not attorneys.
Both patent agents and patent attorneys can draft and prosecute a patent application. Patent agents, however, cannot help you to enforce your patent because they cannot represent you in court. For that you need a patent attorney, and patent attorneys are generally more expensive than patent agents. Remember that getting a patent for your invention is just the beginning. If you invented something of value to others, it is likely that someone will infringe your patent, and you will have to enforce your patent rights in court. Here is where your patent will be tested.
To find a patent attorney or an agent is not difficult. You can try your local Yellow Pages or you can ask for a referral from other inventors who were pleased with the service they received from their patent practitioner. Or you can use the free, on-line Patent Attorney – Patent Agent Referral Service operated by General Patent Corporation.
Before spending your life savings (or, worse yet, your in-laws’ live savings) on getting a patent, remember that you do not need a patent to practice your own invention. Nor will the patent necessarily grant you that right. A patent is a right to exclude others from practicing your invention. That is, a patent gives you the right to sue for patent infringement. Unless you intend to enforce your patent should it be infringed, don’t bother applying for a patent, and save your money.
Alexander Poltorak is a Certified Licensing Professional and CEO of General Patent Corporation, the oldest patent licensing and enforcement firm in the US. Dr. Poltorak is an expert on patent enforcement, patent infringement and patent licensing.
posted by Micah P. Goldsmith at 9:47 AM
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