Protecting your IP – Hiring a Patent Attorney
There are two schools of thought regarding protection of intellectual property. If you have not already lodged patent applications and have a business that operates in the technology space where several major companies have interests you should be aware that large amounts of money and resources are applied by these companies to review emerging ideas and products with a view to protecting their own interests. In some cases, this has resulted in entrepreneurs seeing their ideas and creations challenged with the ultimate goal of delaying their market entry. One school of thought is that where companies have not embarked on the patent process is that the best line of defence is to create the product bring it to market and be the first mover in the field. The alternate strategy is for entrepreneurs to file for the relevant protection available to them. Entrepreneurs should seek Independence legal advice as to be most appropriate course of action.
Obtaining intellectual property protection, such as patents, can minimise competition and act as a defensive mechanism against infringement claims from others. Intellectual property also can attract or solidify funding and partnerships. Should you decide to apply for Patent protection then you will need to consider hiring a professional Patent Attorney.
As the author of this article I was recently involved with an Australian company that had been granted an Australian Standard Patent and was in the process of applying for a US Patent. In this case the company engaged an Australian based Patent Attorney to prepare the application which was subsequently lodged with the US Patent Office. Protocol being what it is, the US Patent Office will not correspond directly with a Patent Attorney from another country meaning that if you go through this process you will also need to engage a US based Patent Attorney so that the two attorneys can communicate with the objective that the latter corresponds with the US Patent Office. Selecting the right local Patent Attorney in your country may also come with the advantage that they have US counterparts to work with. This was the case in our situation, the dialogue took place between the attorneys and the US Patent Office and a US Patent was successfully obtained, however, the time frame involved from lodgement to grant of Patent was over 3 years and the costs exceeded $30,000 even though the US process started with all of the information, description etc that had already been created for the Australian Patent application.
The bottom line is that the process of applying for Patents is a time consuming and costly excersise and requires continual communication with your Patent Attorney.
Hiring a Patent Attorney
Patent attorneys can be classified in to two groups, those that specialise in obtaining patent rights for inventions, and those that specialise in handling legal disputes about whether someone is infringing an existing patent.
Some of the questions that need answering before you select a Patent Attorney include:
- Do you specialise in patent prosecution and/or patent litigation?
- Do you specialise in a particular sector or technology?
- How many patents have you successfully obtained?
- Have you dealt with patent attorneys in other countries?
- Do you hold the appropriate licences and qualifications?
- How many patent applications do you typically file per year?
- What is your success rate?
- What is the profile of your typical client?
- Do you work with startups?
- Will you be working on this application personally, with colleagues in your company or be employing junior associates to do some of the work?
- Can you provide an outline of how you will work with our company on this project and how much time you require with key personnel?
- Are there any hurdles you see in presenting this application?
- Are you representing any similar interests or products in this sector?
- How do you charge by the hour or a fixed fee?
- Can I expect any charges for extras?
- What do you think the total cost estimate will be?
- How long do you think the process will take?
- Can you provide client references?
Preparing to meet with a Patent Attorney
Preparation and some research can save you money and heartache in the long run. Before you meet with a potential candidate consider doing the following:
- Prepare a description complete with photographs of your idea.
- If you have a prototype be prepared to discuss its features.
- Explain the features and attributes that differentiate your product from others.
- Explore the competition as they may have features that you are claiming as unique.
Professional Patent Searches can be an option to reduce costs before engaging a patent Attorney. In the USA, according to www.ipwatchdog.com , they will be able to find prior art patent and pending applications that you did not know about. Searches done by a professional patent searchers and an attorney written opinion typically range from $1,000 to $3,000, depending upon:
- The amount of written analysis you want to receive;
- The complexity of the invention; and
- The amount of prior art discovered that needs to be considered.
The search directs the entirety of the remainder of the patent project, or it could show there is no reasonable opportunity to obtain a suitably broad patent claim so the project should be abandoned, saving the inventor many, many thousands of dollars.
Patents can be valuable in many ways, they can help you secure investment funds, create a product that is unique, or they can be saleable in their own right. Ensure that before you decide to engage a Patent Attorney you have done your research and are confident that your idea is not only able to be protected but that it is worth protecting. Choosing the right Patent Attorney is critical to success, for example in the case of the Australian company (above) that applied for a US Patent it was necessary to terminate the first Patent Attorney company and find a new one. The Patent Attorney that had secured the Australian Patent unfortunately died before the US Patent application had run its course and the process was taken over by individuals within that company who lacked the relevant experience. $10,000 in fees later the application was rejected by the US Patent Office. A new firm was found that had the required experience, a challenge was lodged and after 6 months a US patent was granted.