GENERAL INFORMATION
- Why is an attorney necessary?
- Attorneys and agents
- Why not go through an invention submission company?
WHY IS AN ATTORNEY NECESSARY?
PATENTS
The practice of patent prosecution is a very specialized area of law. It is one of only two areas of law where attorneys are allowed to advertise that they "specialize"; the other being admiralty law. In fact, patent law is so complex, it is the ONLY area of law that requires its practitioners to take and pass a separate, Federally administered, Bar examination, called the Patent Bar. And there are good reasons for this requirement.
Getting a patent is, generally speaking, not a difficult endeavor-getting a patent that has value, however, requires skill and experience. The value of a patent depends on what is claimed in that patent. If the claims are extremely "narrow," meaning very specific, the patent's value is less than if they are very "broad," or general. For example, a patent claiming a stool with four wooden legs and a wooden seat is too narrow. Anyone could make a stool with a number of legs other than four or from a material other than wood and not infringe your patent because you claimed exactly four legs and wood as the material. On the other hand, claiming "a surface supported by at least one element" would probably be too broad as this claim could read on many existing devices, not necessarily limited to stools.
A skilled patent practitioner will take the time to survey what other similar inventions are already in the public domain and structure the claims to differentiate from other inventions, while simultaneously providing you with the broadest claim coverage possible.
Additionally, between case law decisions, the Manual of Patent Examining Procedure, the Code of Federal Regulations, and the United States Code, there are literally thousands of rules and regulations to be intimately aware of and to properly navigate when prosecuting a patent. The great majority of patent applications are initially rejected by the USPTO. A practitioner must stay aware of all rule changes and any changes in case law decisions to successfully overcome the grounds for rejection of the application. This knowledge requires practitioners to frequently read recent case law decisions and rule changes. Patent rights can be, and have been, won or lost on the turn of a single word in the patent application.
Lastly, attorneys are licensed. The sole reason for requiring a license to practice law is for regulatory purposes. If a non-attorney commits an act of deceit, dishonesty, or malpractice, there is no risk that his license might be revoked and his livelihood taken away. This is not so for an attorney. The rules in most states dictate that if an attorney commits an act of dishonesty, even if not pertaining to practicing law, for example selling his own land, or even if in a state other than the one he is licensed in, his license can be revoked. This extraordinary liability will ensure that an attorney always makes your matter a priority and will work his hardest to protect you, your property, and your rights.
For further information, please read the statement from the U.S. Patent and Trademark office on ATTORNEYS AND AGENTS .
TRADEMARKS
Trademarks law, similar to Patent law, is a very complex, highly regulated area of law. Only a licensed attorney can represent you when filing a mark. You should only trust your Trademark matters to an attorney experienced in that area of law.
COPYRIGHTS
Copyright law is much more straightforward than Patent or Trademark law. Similar to Trademark law, however, only a licensed attorney can represent you when filing a Copyright. You should only trust your Copyright matters to an attorney experienced in that area of law.
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ATTORNEYS AND AGENTS
The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO or Office) to obtain the patent is an undertaking requiring the knowledge of patent law and rules and Office practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention.
Inventors may prepare their own applications and file them in the USPTO 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.
Most inventors employ the services of registered patent attorneys or patent agents. The law gives the USPTO the power to make rules and regulations governing conduct and the recognition of patent attorneys and agents to practice before the USPTO. Persons who are not recognized by the USPTO for this practice are not permitted by law to represent inventors before the USPTO. The USPTO maintains a register of attorneys and agents. To be admitted to this register, a person must comply with the regulations prescribed by the Office, which require a showing that the person is of good moral character and of good repute and that he/she has the legal, and scientific and technical qualifications necessary to render applicants for patents a valuable service. Certain of these qualifications must be demonstrated by the passing of an examination. Those admitted to the examination must have a college degree in engineering or physical science or the equivalent of such a degree.
The USPTO registers both attorneys at law and persons who are not attorneys at law. The former persons are now referred to as ""patent attorneys"" and the latter persons are referred to as ""patent agents."" Both patent attorneys and patent agents are permitted to prepare an application for a patent and conduct the prosecution in the USPTO. Patent agents, however, cannot conduct patent litigation in the courts or perform various services which the local jurisdiction considers as practicing law. For example, a patent agent could not draw up a contract relating to a patent, such as an assignment or a license, if the state in which he/she resides considers drafting contracts as practicing law.
Some individuals and organizations that are not registered advertise their services in the fields of patent searching and invention marketing and development. Such individuals and organizations cannot represent inventors before the USPTO. They are not subject to USPTO discipline, and the Office cannot assist inventors in dealing with them.
The USPTO cannot recommend any particular attorney or agent, or aid in the selection of an attorney or agent, as by stating, in response to inquiry that a named patent attorney, agent, or firm, is "reliable" or "capable." The USPTO publishes a directory of all registered patent attorneys and agents who have indicated their availability to accept new clients, arranged by states, cities, and foreign countries. The Directory may be purchased in paper form from the Government Printing Office or from the USPTO''s Office of Electronic Information on the Cassis ASSIST CD-ROM disc. It is also available on the USPTO Web site at http://www.uspto.gov/web/ offices/ dcom/olia/oed/roster/index.html.
The telephone directories of most large cities have, in the classified section, a heading for patent attorneys under which those in that area are listed. Many large cities have associations of patent attorneys.
In employing a patent attorney or agent, the inventor executes a power of attorney or authorization of agent, which must be filed in the USPTO and is usually a part of the application papers. When a registered attorney or agent has been appointed, the Office does not communicate with the inventor directly but conducts the correspondence with the attorney or agent since he/she is acting for the inventor thereafter although the inventor is free to contact the USPTO concerning the status of his/her application. The inventor may remove the attorney or agent by revoking the power of attorney or authorization of agent.
The USPTO has the power to disbar, or suspend from practicing before it, persons guilty of gross misconduct, etc., but this can only be done after a full hearing with the presentation of clear and convincing evidence concerning the misconduct. The USPTO will receive and, in appropriate cases, act upon complaints against attorneys and agents. The fees charged to inventors by patent attorneys and agents for their professional services are not subject to regulation by the USPTO. Definite evidence of overcharging may afford basis for USPTO action, but the Office rarely intervenes in disputes concerning fees.
WHY NOT GO THROUGH AN INVENTION SUBMISSION COMPANY?
If you are tempted to hire an Invention Submission Company because they offer lower prices for what seems like the same service, please read Top10scams, published by the U.S. Patent and Trademark office, warning that the number of people being taken advantage of by invention submission companies is increasing daily. Also see my section on WHY AN ATTORNEY IS NECESSARY . The growing number of sham services stems from the fact that the average person doesn't understand what is required to fully protect his or her intellectual property and what is at stake if proper protection is not obtained.