Home | Subscribe | Post a Job | Advertise | Contact
« Two recent 101 Cases at the PTAB |
| Citing References at the PTO »
Posted on Oct 23, 2012 at 07:40 AM | Permalink
| Save to del.icio.us
You can follow this conversation by subscribing to the comment feed for this post.
I love the first question. Okay, you write it up, and I'll file it for 1k plus filing fees. Is that cheap enough?
Yes, it's worthless, but it's cheap and filed, right? That isn't what you wanted?
It amazes me that people think you can get million dollar pay days based on 1k patents.
bad joke ahead |
Oct 23, 2012 at 08:44 AM
Part of the reason people have to hire patent agents in the first place is because they can't tell good patents from bad by themselves.
Other areas of law are more clear-cut. If you litigate, you either win or lose, and if you win you get a certain remedy you can typically quantify and compare to your expectation. If you negotiate a contract, you get the deal you get, and it's either good or bad.
To the inventor at the idea stage, patent prosecution looks a lot like drafting a document and obtaining a government permit. If he got a document and a filing receipt, mission accomplished. This one comes with a shiny ribbon on it? So much the better. Looks pretty much the same as that other one, and he's running a for-profit business, so why shouldn't he go with the low-cost provider? Go on, explain to him, in terms he can understand, the value add of paying $10k for his patent.
Oct 23, 2012 at 08:57 AM
Yes, I go through this education process a couple of times a week.
I really think something should be done about Inventhelp, Legalzoom, etc. They're reinforcing this legal misconception to the detriment of potential clients and the public.
bad joke ahead |
Oct 23, 2012 at 09:39 AM
My IP law professor on the first day of Patent Law said what is the first question you ask a client?
Answer: How much money do you have?
Why: Because you get what you pay for.
Oct 24, 2012 at 10:07 AM
Dennis, you may wish to clarify (or reconsider) the breadth of the short comment you made in reply to Q. 775 noted above. ("In the US, Patent attorneys are registered with the USPTO and can practice in any state. – Dennis Crouch").
Preemption under Sperry v. Florida (US, 1963) prevents states from regulating the practice of law only as it relates to representation before the Patent Office. States are fully capable of regulating the practice of law in other areas, for example, representation before the Trademark Office or in litigation, giving infringement opinions unrelated to prosecution of a particular patent application, or the preparation of licenses or assignments (save for filling in a form assignment).
A patent attorney practicing outside the state(s) of licensure is no different from a patent agent -- save that particular care must be taken to avoid the unauthorized practice of law.
Cass L. Singer |
Oct 24, 2012 at 12:07 PM
Patent attorneys can practice in any state, as patent attorneys. That's all that need be said, as long as you understand that the scope of the licence is the same for patent attorneys and patent agents. Practicing as an attorney (no prefix) is quite another thing.
As for Sperry, it defines the scope of the licence as patent preparation and prosecution and services 'incident thereto', whatever that may mean, because no court has ever told us. It doesn't say 'representation before the office', so don't put words into the mouth of Earl Warren.
Alun Palmer |
Oct 24, 2012 at 07:21 PM
As an afterthought, the words 'before the office' come from 35 USC 31, now carried over into 35 USC 2(b)2(d). So clearly that's where you got them from, the statute, not the decision.
Alun Palmer |
Oct 24, 2012 at 07:24 PM
The comments to this entry are closed.
Jason Rantanen, Associate ProfessorUniversity of IowaCollege of LawSSRN Articles
Occasional guest posts by IP practitioners and academics