How to select intellectual property counsel

© Copyright 1993 to the present, Oppedahl Patent Law Firm LLC.
Disclaimer: This is not legal advice. Click for information on the purpose of this page.

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How to choose patent counsel.

© Copyright 1993 to the present, Oppedahl Patent Law Firm LLC.
Disclaimer: This is not legal advice. Click for information on the purpose of this page.

It is not easy to choose patent counsel. At the outset let be said that patent representation is a very personal matter. Simply going to a very large, very well-known patent firm is not an assurance that you will be satisfied, since what is much more important is the particular professional or professionals with whom you will be interacting.

One of the best ways to find a good patent agent or attorney is by a referral from a trusted friend or associate, a satisfied client whose judgment you trust. Unfortunately, many people who are looking for a patent lawyer do not have the luxury of someone to turn to for this kind of referral.

Ideally the agent or attorney you choose should have a technical background consistent with the technology of your invention. There is something to be said for choosing a patent attorney who has litigated patents; he or she is perhaps more likely to bear in mind the ways that patents are interpreted in court. Ask to see sample issued patents that have been obtained through his or her efforts.

Searches in online computer databases may help you evaluate candidates. To check references of an attorney or agent you could search in Lexis, Dialog, Questel/Orbit, or STN for patents prosecuted by the candidate, then contact the inventors and ask them whether they would recommend the candidate to others. You could search the candidate's name in legal databases such as Lexis or Westlaw to see if he or she appears in reported court cases involving patents.

Interview the candidate to determine his or her level of technical knowledge. You would probably not want to have to spend long hours at his or her billing rate explaining simple background information if a different candidate can be found who is quick to understand your technological area.

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What is an invention development company (IDC)?

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Disclaimer: This is not legal advice. Click for information on the purpose of this page.

An invention development company is a company other than a registered attorney or agent which assists inventors obtain patents and/or market their inventions. The Patent Office defines the term as follows at 37 C.F.R. 10.23(17):

"Invention developer" means any person, and any agent, employee, officer, partner, or independent contractor thereof, who is not a registered practitioner [agent or attorney admitted to practice before the U.S. Patent Office] and who advertises invention development services in media of general circulation or who enters into contracts for invention development services with customers as a result of such advertisement.

"Invention development services" means acts of invention development required or promised to be performed, or actually performed, or both, by an invention developer for a customer.

"Invention development" means the evaluation, perfection, marketing, brokering, or promotion of an invention on behalf of a customer by an invention developer, including a patent search, preparation of a patent application, or any other act done by an invention developer for consideration toward the end of procuring or attempting to procure a license, buyer, or patent for an invention.

"Customer" means any individual who has made an invention and who enters into a contract for invention development services with an invention developer with respect to the invention by which the inventor becomes obligated to pay the invention developer less than $5,000 (not to include any additional sums which the invention developer is to receive as a result of successful development of the invention).

"Contract for invention development services" means a contract for invention development services with an invention developer with respect to an invention made by a customer by which the inventor becomes obligated to pay the invention developer less than $5,000 (not to include any additional sums which the invention developer is to receive as a result of successful development of the invention).

There are many invention development companies out there, and most, in my experience, are dishonest, manipulative companies that simply rip off innocent inventors. A handful, perhaps, are honest and deliver good value, but those are the exception. The newspapers, magazines, and Better Business Bureau files are filled with reports of innocent people who were duped into handing over thousands of dollars of their hard-earned money for the futile hope that an invention development company would genuinely market their inventions.

The Federal Trade Commission has a brochure about Invention Development Companies.

What are some of the warning signs of an untrustworthy invention development company?

© Copyright 1993 to the present, Oppedahl Patent Law Firm LLC.
Disclaimer: This is not legal advice. Click for information on the purpose of this page.

Beware if the work the company proposes to do calls for an Invention Disclosure Document or a mere Provisional Patent Application rather than a complete patent application under 35 USC § 111(a). Beware if the company proposes that its main service will be publicizing the invention in a newsletter. (The newsletter is probably published by the company, and may not be read carefully by anyone to whom it is sent.) Beware if the company proposes that its main service will be giving you a list of "leads", namely names and addresses to which it suggests you write.

Beware if the company is not able to tell you that an attorney or agent registered to practice before the U.S. Patent Office will be preparing a patent application as part of the services to be performed. Under rules of the U.S. Patent Office, a patent agent or attorney registered to practice before the Patent Office that works on a patent application on your behalf is required to inform you if the invention development company has had certain sorts of formal complaints filed against it:

A patent agent or attorney registered to practice before the Patent Office is forbidden to "Represent[] before the Office in a patent case either a joint venture comprising an inventor and an invention developer or an inventor referred to the registered practitioner by an invention developer when (i) the registered practitioner knows, or has been advised by the Office, that a formal complaint filed by a federal or state agency, based on any violation of any law relating to securities, unfair methods of competition, unfair or deceptive acts or practices, mail fraud, or other civil or criminal conduct, is pending before a federal or state court or federal or state agency, or has been resolved unfavorably by such court or agency, against the invention developer in connection with invention development services and (ii) the registered practitioner fails to fully advise the inventor of the existence of the pending complaint or unfavorable resolution thereof prior to undertaking or continuing representation of the joint venture or inventor." (37 C.F.R. 10.23(17).)

The Federal Trade Commission has a very helpful brochure about Invention Development Companies.

Legitimate invention development assistance

© Copyright 1993 to the present, Oppedahl Patent Law Firm LLC.
Disclaimer: This is not legal advice. Click for information on the purpose of this page.

So, there are only sharks out there?

No, thank goodness. The overwhelming majority of registered patent attorneys and patent agents are well-intentioned. Among organizations other than patent attorneys and agents who cater to inventors, this writer has heard good comments about two:

We would be interested to hear from anyone who has had experience with these organizations, or with any invention development company.

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Last revised May 27, 2004.


Who will help me market or license my invention?

© Copyright 1993 to the present, Oppedahl Patent Law Firm LLC.
Disclaimer: This is not legal advice. Click for information on the purpose of this page.

The first and most important thing to know is to be wary of Invention Development Companies (IDCs). Many IDCs exists solely to prey upon inventors by giving them unrealistic promises of efforts that will be made to market their inventions.

Most patent attorneys and agents, including OPLF, profess to have no particular expertise in marketing or developing inventions or finding licensing partners. This is perhaps partly out of an aversion to the predatory and manipulative practices of many Invention Development Companies.

This does not, however, mean that patent attorneys are never of any help in marketing and licensing activities. For example, where an inventor finds a willing partner or licensee, a patent lawyer with experience in the area may be very helpful in negotiating the partnership or licensing terms and conditions.

There are a handful of legitimate organizations (in addition to patent attorneys and agents) that cater to inventors.

What will likely happen if I try to license my invention without filing a patent application?

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What will likely happen if I try to license my invention without filing a patent application?

© Copyright 1993 to the present, Oppedahl Patent Law Firm LLC.
Disclaimer: This is not legal advice. Click for information on the purpose of this page.

Large well-known U.S. companies routinely return invention submissions unread, typically enclosing a brochure explaining the company's unwillingness to consider any invention unless the inventor first signs a form agreeing to release the company from any obligations other than to pay for patent rights. With such companies it is unworkable to proceed without having filed a patent application on the invention.

A major reason that large companies operate in this way is that it prevents lawsuits. When an inventor discloses an invention, it is difficult to determine after the fact to what degree the information disclosed was a trade secret. Thus, if the company later uses any technology similar to the disclosed invention, the company may have a very difficult time proving that it the technology was not a trade secret stolen from the inventor. On the other hand, the boundaries of what is covered by a patent are relatively well-defined, and large companies have procedures for checking what patents they might be infringing.

Conversely, if the inventor has filed a patent application, he or she is in much better position to prevent a company to which he has disclosed the invention from using the invention without compensation.

Inventors should beware, however, that suing to enforce patent rights can be expensive, often costing tens of thousands of dollars or more. If the expected royalties or damages are smaller than the likely litigation costs, then a patent may provide little recourse against an infringer. If an infringer is found to be a knowing infringer, however, the court may choose to treble the damage award. Sometimes a patent attorney can be found who will offer to represent a patent owner in return for a share of the proceeds.

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