• The Patent Reform Act of 2010 receives a favorable opinion and thorough analysis on Patent Baristas. Stephen Albainy-Jenei notes a number of critical features of the proposed bill, including authorization for the USPTO to set its own fees, a move to first-to-file, raising the bar for findings of inequitable conduct and willful infringement, elimination of the best mode requirement, new pre- and post-grant review procedures, and more. In my mind it is a mix of really good changes and not-so-good changes- of course odds are good we will end up with the status quo as usual. Fortunately Kappos seems to be doing a good job internally.

• Gene Quinn at IPWatchdog discusses the new USPTO proposal allowing the extension of provisional patent application pendency from 12 to 24 months. Quinn approves, although he comments regarding the use of late-filing procedures: “I really hope that as patent reform moves forward in Congress someone can add a simple amendment to the bill that would change ‘12 months’  and ‘12-month period’ in 111(b)(5) to ‘24 months’ and ‘24-month period’ respectively. That would be cleaner for sure.“ I personally dislike that this has been billed as examination deferral when in reality it seems more of a trap for the unwary.

• Just N Examiner reports and discusses the recent change to patent examiner hoteling rules. Experienced examiners have been allowed to work at home for years now, reducing the amount of office space needed on the PTO campus in Alexandria. However, prior to the rules change Examiners had to check in at the PTO twice every biweek. Is this change a step towards a nation-wide examining corps?

• IP Kat discusses the interplay of trademarks and brands and the difficulty of defining and analyzing brands in a business context.

• Duets Blog illustrates how direct navigation allows cybersquatters to profit from your business.

Any thoughts or questions on the latest Patent Reform Act or the PTO’s new proposal for provisional patent applications?

This is Terrible Advice

No Fortune 500 companies are going to read Seth Godin’s blog, see the light, and decide that those cease & desist letters really were not worth it after all, and maybe they should stop sending them out. To the extent that Godin’s readership consists of people who actually might seek intellectual property (IP) protection, I imagine they are primarily entrepreneurs and small business owners. Godin’s article will encourage them not to seek out such protection.

These people do not need anyone to convince them NOT to protect their IP. Not protecting your IP is easy-just don’t do anything! Lots of people do that because they are not aware of the importance IP can have to the success of their business. Not protecting your IP because Coca-Cola or MGM is sending out 10 cease and desist letters today is a mistake of monumental proportions and it is irresponsible to encourage entrepreneurs to make that mistake.

What Entrepreneurs Need to Know About IP Protection

Entrepreneurs need to know up front what IP protections are available and what their costs and benefits are. And there are benefits- potentially enormous benefits. Recent estimates place the total value of patents in the U.S. at $200 Billion. Brand value (integrally tied to trademarks) makes up a third of the total value of fortune 500 companies (that’s well over $1 trillion folks).

Registering a trademark is not about suing everyone who says the words “thank you”, it is about protecting your brand from competitors and avoiding costly legal conflicts. Patenting an invention allows you to lock your competitors out of the marketplace for a period of 20 years, and if you can get a patent for a valuable invention you came up with in the shower, more power to you.

An initial patent search and provisional application are essential to any entrepreneur planning to start a business around an innovative new product. They cost a lot less than “tens of thousands of dollars” (try ~$2,000) and without them potential investors and partners will not even talk to you. Without a search, you do not even know if your invention has any value. These protections are just part of the cost of entering that kind of business, and they are far from the largest cost involved (try prototyping or manufacturing an initial run).

So don’t dismiss IP protection out of hand. Figure out the costs involved and the likely benefits and do a cost/benefit analysis.

Should I Spread My “Ideas” Around as Godin Suggests?

Not if they have value to you. If, considering the risks involved, the cost of trying to protect your idea is greater than its benefit to you, then sure you should find something else to do with it. Maybe, as Godin suggests, telling everyone about it will build your reputation and be beneficial to you.

But for a company to spread its brand around freely or spread its new, heavily researched product around to its competitors in order to “Build a reputation as someone who creates great ideas” would be destroying enormous value- and insane. In this digital age, IP protection matters more than ever.

• Over at IP Watchdog, Stephon Sharon discusses the future of global copyrights. Sharon looks at the challenging issues presented by an increasingly global, networked economy. What does Sharon pinpoint as the best solution? Consistency, to start:

“It pains us to see our intellectual property ripped off in front of our faces, but even more so when it is done overseas and we feel powerless to stop the infringement. We have made small steps toward achieving some level of consistency, but looking at the big picture we are not heading down the right path.”

• Dennis Crouch at Patently-O details the implications of US patent filings falling in 2009 – for the first time in 13 years.  Does that signal a step back in innovation? Not necessarily, says Crouch – the lag between invention and patent filing, changes in patent law independent of innovation, and the multi-year lag between foreign innovation and US patent filings discounts the concern that the US just isn’t as creative.

• BlawgIT warns attorneys/firms: protect your websites and networks – for your sake and your client’s.

• ABA Journal has released their 3rd Annual Blawg 100 list – a great resource for legal blogs and folks to follow on Twitter. [h/t to the Patent Baristas]

• Duncan Bucknell Company points to Seth Godin’s recent blog post about whether anyone needs to protect their ideas. Godin, a provocateur in marketing and communications in our social, digital and global age, says:

“It’s a real crapshoot to spend tens of thousands of dollars to patent an idea you thought up in the shower one day.

So, how to protect your ideas in a world where ideas spread?

Don’t.”

DBC asks:

“So, IP ecosystem – this is how you are thought of by people who have a very large impact on public opinion – what do you think and what are you going to do about it?”

In the meantime, mark your calendars for September 9, when KANDL will be releasing a new podcast featuring yours truly. The podcast is about 45 minutes long and touches on many aspects of intellectual property that are of special concern to small- to mid-sized businesses. If you have ever been curious about patents, trademarks, or copyrights, I encourage you to listen to this free podcast. It came out very well and is chock-full of valuable information.

Leave any questions in the comments below.

• Relevant Experience
• Cost and Fee Structure
• Style and Compatibility
• References
• Disciplinary Record

I would not recommend using the first attorney you hear about without at least looking into and considering some different options.  It is very easy in this day and age to find different patent attorneys who are willing to work with you.  Try to pick the best one for your circumstances.

Also note that I have not listed location as a factor.  Patent attorneys are licensed to practice patent law anywhere in the country, and most including myself have clients nationwide and even internationally.  Meeting an attorney in person can help you evaluate the style and compatibility factor, but otherwise I have not found proximity to be important to my client relationships.  Most correspondence as a matter of convenience will be by telephone or email in any case.

Relevant Experience

Make sure the attorney is a registered patent attorney.  Ask the attorney how much experience he or she has in the relevant area of patent law- drafting and prosecuting patent applications, patent licensing, patent infringement lawsuits, or whatever your need is.  Find out if the attorney has written blog posts or articles or given presentations about your topic of interest.  If they have, you can read (or view)  them and get a feel for their expertise.  Patent law is a highly specialized field and you may want someone who specializes in a particular field, not someone who dabbles in it.

Also look into what kinds of technology they have worked with in the past and what technical degree they have.  If your invention is in the field of biotechnology, that is a highly specialized field that can be difficult for someone with a bachelor’s degree in computer science or mechanical engineering and who does not regularly work with such inventions to understand.

Many times biotech inventions are handled by an attorney with a PhD in molecular biology or a similar field. If you choose to use an attorney without much experience in your field, see if they have an expert in the technology that they can call on for help if needed.  On the other hand, a mechanical invention can probably be handled by just about anyone.

You may also want to consider whether the attorney has experience in other areas that you may want to take advantage of in the future.  For example, if you know you will need trademarks in the future, it is better to find one law firm or attorney that does both patents and trademarks, rather than having to deal with a different firm for each.

Cost and Fee Structure

Cost is often an important factor for small businesses and individual inventors.  Find out the billing structure (hourly or flat rate?) and rate(s).  With an hourly billing structure, you are billed according to the amount of time spent by the attorney.  It is difficult to predict in advance how much time most things will take.  Therefore, you will not know the total cost before work is completed.

With a flat rate fee structure, you are quoted a price for the work you want done and that is how much you pay regardless of the amount of time it takes.  With a hybrid fee structure, there might be an hourly rate up to a cap depending on the type of work.

For my own practice I have chosen a flat rate fee structure, which gives my clients the ability to budget for their intellectual property expenses in advance.  It can be difficult to compare hourly and flat rate practitioners, but an attorney that uses hourly billing should be able to provide you with estimates for the amount of time various tasks will take on average, which will give you some basis for comparison.

Fees and rates can vary widely, so it is likely that this factor will rule out some attorneys if you are operating under budgetary constraints.

Style and Compatibility

If an attorney has experience in the areas of interest to you and has a reasonable cost structure, the next step is to talk to the attorney and find out if you would work well together.  For example, some attorneys just do not like to work with individual inventors, finding them to be too much of a time drain.  Others gear their practice towards such clients, as I do.  You may not be able to find this out without contacting the attorney and discussing what you are looking for.

Ask what kind of clients they represent, how often they correspond with clients and by what methods, what hours they are available, and maybe questions about themselves (“How did you become a patent attorney?”, etc.) This will help you to get a feel for their personality and for the way they run their practice.  I find that the clients who work the closest with me tend to get the very best results.  Try to find an attorney you would enjoy working with.

References

If you have been referred to an attorney by an associate or by another lawyer, ask their opinion of the attorney.  Ask about their strengths and weaknesses.  If you know someone who has worked with the attorney in the past, ask about their experiences.  You may also be able to find references online on linkedin or in various lawyer directories.

Disciplinary Record

Before settling on an attorney, check the state bar for any disciplinary complaints that  may have been filed against him or her.  This quick and simple check can help avoid the worst deadbeats and scammers.  On the other hand, a minor disiciplinary event may not necessarily disqualify someone if they are perfect in other respects.  It’s up to your judgment.

Appeal Board – Shorthand for the Board of Patent Appeals and Interferences (BPAI).  The Board consists of Administrative Patent Judges (APJs), typically long-time Examiners with good records.  An examiner’s second rejection of one or more claims can be appealed to the Appeal Board.

Claims – A patent application must include a section that specifically sets out what the inventor claims is entitled to patent protection as a new, non-obvious invention.  The section begins “I (or We) Claim:” and a numbered list follows.  Each number is referred to as a “claim” and is examined separately by the Examiner for compliance with the patent law.

Examiner – An examiner is an employee of the United States Patent and Trademark Office and examines either patent or trademark applications for compliance with the law.  If the application is not in compliance with the law, an Office Action is sent out by the Examiner explaining why.  If the application does comply with the law, it will be allowed to issue as a patent or registered trademark, as the case may be.

Office Action – This is a document sent to the applicant or applicant’s representative from the Examiner at the Patent Office explaining why a patent application is not in condition for allowance. An Office Action is only sent if one or more of the claims of an application is rejected.  If all the claims are in condition for allowance, the Examiner will instead send a Notice of Allowance.

Patent Prosecution – The process of applying for and receiving a patent from the United States Patent and Trademark Office (USPTO or just “PTO”). Preparing and filing an application, responding to Office Actions, and appealing to the Appeal Board all fall into this category.  Sometimes, due to the word “prosecution,” someone will think this refers to suing people who infringe patents, but it doesn’t. That would be patent litigation.

PTO – Short for United States Patent and Trademark Office.  This is an agency of the United States government and a division of the Commerce Department.  It is responsible for examining patent and trademark applications for compliance with the law.

I have found in my own practice that clients with a basic knowledge of the patent process are much more effective in assisting my preparation and prosecution of their patent applications. If you are able to discuss your application intelligently, you will receive better applications that run into less problems at the patent office, issue more quickly as patents, and hold up better in litigation.

It is therefore my hope that individual inventors and small businesses who are unfamiliar with the patent process will learn a little about that process from this blog. To that end, I will start with more general posts regarding the nature of patents and the other intellectual property rights, and build up to somewhat more advanced topics regarding patent strategy and prosecution. At all times, the focus will be on questions I am frequently asked by clients or that I think inventors and businesses should know the answer to before beginning the patent process.

If you have any questions or comments, please contact me at CliffordHyra@patents101.com. If you have any topics you would like to see covered, please let me know and I will take your input into consideration. However, I am unable to address any specific questions about your personal situation, unless I have been retained as your attorney.