The Best Way to Apply for a Patent: Do it Yourself or Hire an Attorney

You’ve probably said it time and again, everytime you see a new product hit the market- “Why didn’t I think of that?” Or, maybe you have seen a new product that you had already imagined. Then, you probably said, “That was my idea. Why didn’t I patent that?”

A patent is a legal document that protects an inventor so that no one else can make, sell, or profit from their invention. Patents that are issued in the United States last for generally twenty years from the date they are filed. The U.S. Patent Office (USPTO) receives approximately 200,000 patent applications a year.

A few years ago, my friend Tom Smythe * came up with an idea for a device to help people lose weight. It was a relatively simple device that was to be worn on the body. Tom was always a tall, slender man. He never had a weight problem himself. But, he knew several people that fought the “Battle of the Bulge.” And, Tom knew that weight loss was a forty-billion-dollar-a- year market that grew steadily every day. Tom wanted to help people lose unwanted pounds, and he also wanted a piece of the pie.

When he contacted me, the inventor had his dream. More importantly, he had done his homework. Tom also had a complete written description and diagram of his weight loss device. He also had made a working prototype. This could show how it worked. It could also be tested for actual effectiveness.

Since I had had some experience with the invention of a kitchen gadget, I suggested that we help to protect his original idea with an “Invention Disclosure.” We signed and dated the original sketches, description, and photographs of Tom’s invention. I then made copies and placed the original documents in an envelope and sent them to Tom’s business address. When he received them, he left the envelope intact. We then filed the envelope away in case we needed it in the future.

We now had an “Invention Disclosure.” While these documents weren’t one hundred percent legal like a registered patent is, they could be used as proof of date as to when Tom had first conceived his idea. Besides having his sketches and a working prototype, Tom also had contracted the services of a Patent Attorney. It cost him a $5,000. retainer. I had no previous experience with such an attorney. When I invented my kitchen gadget, I attempted to patent it by using one of those companies that offers to do all of the legwork for you, for a fee. Tom insisted that we needed Attorney Friedman’s* services because neither of us knew the particulars of the law.

The first item on the patent attorney’s agenda was to research the invention. This meant that he had to find out if anyone already had a patent on an invention that was in any way similar to Tom’s weight loss device.

A few weeks passed without a word from Attorney Friedman. Finally, Tom called him, and was told that he was “still in the process” of researching. Since we were in a hurry to “get the show on the road”, I visited the U.S. Patent Office’s website (http://www.uspto.gov/) myself to see if I could find anything out. I found out that you can search their site to find patents on inventions that have been introduced since the year 1976. You can also search for applications that have been filed.

Unfortunately, among the thousands and thousands of inventions that had already been patented, I found a weight loss device that was strikingly similar to Tom’s. I relayed the information to my friend, and he phoned Attorney Friedman with the news. Tom gave him the patent number, description, owner’s name and contact information, and all of the other pertinent information I had found out. Attorney Friedman responded that he would “check it out and get back to him.”

Another week or two passed, and the patent attorney finally called my friend back. He verified the information that I had uncovered and informed Tom that he could not patent his invention. (We had already figured this out.) He then suggested that Tom offer to buy the existing patent so he could manufacture and market the weight loss product as he wanted to do. Attorney Friedman offered to contact the owner of the patent, and to handle the negotiations. Since Tom wasn’t ready to give up on his dream, he agreed.

Another week or two passed by, and the attorney finally phoned Tom. He had phoned the holder of the patent, and the man agreed to sell his patent to Tom… for one million dollars. Attorney Friedman said the man would not reduce his asking price, that it was firm.

Tom had no recourse but to turn the offer down. Even if he could have gotten his hands on a million dollars, we didn’t have enough hardcore evidence that he could have recouped the investment in the long run.

Attorney Friedman remorsely said there was nothing more he could do for Tom. Tom reminded him that he hadn’t done much for him anyhow. *I* had found the existing patent for the similar weight loss device along with the other information we needed on the Internet myself. He added that he could have phoned the man himself and attempted to negotiate a deal.

Fortunately, the patent attorney agreed, and he refunded Tom’s $5,000. in full.

The moral of the story? Patent attorneys do have their place in this world. Such attorneys are allowed to practice in the courts of at least one state. They can also appear before the USPTO. The U.S. Patent Office itself has a register of attorneys and agents who may represent persons or companies who wish to apply for a patent. The register is not simply a list. Instead, the names listed have studied the laws that relate to patents. They have also applied, taken, and have passed an examination administered by the USPTO. They have also fulfilled the USPTO’s other requirements.

The USPTO actually prefers that inventors who want to secure a patent retain a patent attorney as my friend Tom did. But, if you decide to do it yourself, you can perform the preliminary research for your invention on the USPTO’s website yourself. You can also contact the Patent Office in order to get free advice. And, you can file the application for your patent right from their site too. The entire process is pretty straightforward.

However, in order to make sure that the patent for your invention has been properly filed, you may consider finding yourself an attorney. Most importantly, a patent attorney can act on your behalf to make sure your patent is not infringed upon. In case anyone tries to steal your patent, an attorney can take the proper actions required on your behalf to protect you.

Companies and corporations utilize the services of patent attorneys every day. They must use their resources to protect their products, patents and business. For example,

So, in conclusion, if you have a product or idea that you want to put on the market, you’ll have to decide whether or not to hire a patent attorney. As I pointed out, you can do your homework yourself. You can apply for, and even receive a patent on your own. But, in order to properly protect your rights, then you’ll need the services of a patent attorney.

*His name has been changed for purposes of anonymity.

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