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Old 01-17-2010, 10:18 AM   #21
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You would be a juicy tender morsel to an unscrupulous patent attorney. Deep pockets, able to pay a continuing stream of legal fees. Mmmm...

A lot of the "big" top notch patent firms won't touch individual inventors' patents. Not enough money and getting paid can be hard. Prosecuting it in the best way may cost too much for a person with limited means. You might be different if you walked in and said "I can put $10,000 down as a retainer and there's plenty more where that came from".

But most of these guys at the top notch firms are dealing with the IBM's, Cisco's, GSK's, Pfizers, Fortune 500 tech, bio, computer firms. That is their bread and butter.

You can undoubtedly find some adequately qualified second string smaller firms that might take on individual work, but most would need a sizable retainer up front. Otherwise I expect they are so desperate for work that they may not be that great at what they do (it isn't that hard to get a law license and USPTO license after all).

But obtaining patent rights to an invention and successfully licensing or self-promoting your invention and making a profit on it is quite another thing.
I regularly referred individual and small business patent matters to a small boutique firm in Minneapolis. They were good and had a good rep and I would not call them second string. They all had abandoned big law for their own small firm. One thing I really liked about them was their vetting process and they were not inclined to pursue a matter that wasn't worth pursuing. They were not cheap but were affordable for my small business clients with IP.
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Old 01-17-2010, 10:46 AM   #22
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The real question though, is why do you want to patent it? (the process is fairly expensive, even if you have a lot of experience successfully writing patents, and so may be able to cut out the lawyering costs, though I wouldn't recommend it).
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My brief exposure to patents was my colleague who did get one and tried to (and is still trying) to have a start-up company based on the patent.....lots of time and money.
If you're thinking of going startup then your IP may (initially) be your only asset. Very few investors want to touch a "trade secret" without some sort of IP to rely on. OTOH if your patent reveals too much then it's straightforward for another company to reverse-engineer your product without technically violating your patent.

One way to screen for IP attorneys in your area is through angel investors. The Angel Capital Association (Angel Capital Association) might help you find one in your area. Cold-call or e-mail one of their members, explain the outline of your idea, and ask what IP attorneys they've used in their due diligence. If your idea is interesting enough then intrigued angels may encourage an IP attorney to contact you.

A huge problem with IP is the time/effort you'll invest in getting it patented. It's extremely time-consuming and expensive to head down one road only to find out that it's blocked with prior art, or to have your patent efforts lurching in one direction when you realize that your business plan needs to go in another direction. Angels are unlikely to invest in unpatented IP unless you have some reputable pit-bull lawyer's assurance that you're likely to get the patent.

Patent litigation is not a business plan, let alone profitable. Licensing might be an opportunity with entrepreneurs or small companies, but large firms will not be impressed, let alone intimidated, by IP.

Another option is your local university's technology-transfer department. They have various names but they essentially look for ways to make money out of their research, especially if they have a business school full of entrepreneurs seeking startup ideas. They might have a lawyer recommendation or one of their business profs might even offer an assessment of your chances.
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Old 01-17-2010, 01:46 PM   #23
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I regularly referred individual and small business patent matters to a small boutique firm in Minneapolis. They were good and had a good rep and I would not call them second string. They all had abandoned big law for their own small firm. One thing I really liked about them was their vetting process and they were not inclined to pursue a matter that wasn't worth pursuing. They were not cheap but were affordable for my small business clients with IP.
I should add that I'm not referring to the small boutique patent firms as "second string". Most of the successful small boutique patent firms do really well as a firm, and also do excellent patent work. I'll probably end up at one of these type firms. These boutique firms are as good as or better than the BigLaw firms locally for patent prosecution work, and usually easier to work with with better rates. And their associates don't hate life as much.

By second string I meant the guy hanging out his own shingle that may or may not be good at patent prosecution work. You may get a patent out of the process, but it may not hold up to later scrutiny if challenged in court or through reexamination. Or the claims of the patent may be so narrowly or inartfully drafted as to leave you with little in the way of actual patent protection (ie the patent claims can be easily designed around to avoid infringement). You, the consumer of legal services, wouldn't necessarily know this until your patent failed to hold up when you sue for infringement or threaten to sue for infringement.

Or the second string guy could get a bunch of garbage in the file wrapper such that you could be estopped from claiming infringement on certain claims. Just a few thoughts as I'm reviewing for my exam. Not a practitioner yet, so big grain of salt I guess!
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Old 01-17-2010, 01:47 PM   #24
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I forgot to mention, some universities have business development programs that can help you do your due diligence. My local university would even do the patent searches and help with figuring out what is the best way to market the invention. All for free. It also had a good list of referral resources. Here is a link to the school's center for economic development, which might help you search for other similar programs: University of Minnesota Duluth Center for Economic Development helps businesses and entrepreneurs in NE Minnesota

You might check to see if your university has similar programs.
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Old 01-17-2010, 01:50 PM   #25
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file wrapper
Hey, you are learning the lingo. I can't understand why they just don't call it the "file."

Good luck on the exam.
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Old 01-17-2010, 01:50 PM   #26
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Not to scare you or anything, FUEGO, but the patent bar is actually much harder to pass than any state bar, its passage rate is usually in the 55-60% range, instead of 75-85% as with state bars (I found the patent bar really easy though with the preparation I did). There are also less than 30,000 active patent attorneys, so it is a pretty specialized field (less than 2% of JD's become patent attorneys).
True the passage rate is a little less (although not a whole lot less than my jurisdiction's passage rate). But they let anyone with the proper 4 year degree and minimum other qualifications take it. So the sample taking the test probably isn't quite the caliber of the average state bar applicant pool. And you can retake cheaply without severe penalty (I think). State bar makes you wait at least 6 months to a year (exams 2x a year) and my jurisdiction doesn't make it cheap to retake. Added to that is the fact that failing the state bar means you can't work as an attorney till you pass, but failing the USPTO means you take it again soon (most people at my law school took it mid-year 3L) without real penalty.

So the incentive to study "just enough" and take a bigger chance at failing exists at the USPTO exam.
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Old 01-17-2010, 01:53 PM   #27
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Hey, you are learning the lingo. I can't understand why they just don't call it the "file."

Good luck on the exam.
Since when are attorneys known for brevity and concise language?

Thanks for the well wishes!
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Old 01-17-2010, 02:59 PM   #28
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I've been a patent attorney for 30 years. Now FI and semi-RE'd at 55. The thing most people overlook is that the value of a patent really depends on the value of the invention it covers. The best-written patent in the world will not have any value if the invention is a left-handed buggy whip (something nobody wants).

The invention has to be on something people will want to buy, and something the competition will have to have in order to compete. If you can keep the competition off your back by way of your patent, you can charge whatever the market will bear and make lots of money (the goal).

Patent attorneys are notoriously bad at evaluating inventions. Some of the dumbest ideas I have seen went on to be big, and the better ideas (in my mind) went nowhere. A lot depends also on the intellect, drive and resources of the people behind the invention. Also luck and timing play roles in the success of an invention. For these reasons most patent attorneys don't want to take "pieces of the action" in lieu of fees for services.

So, to the OP who is cold calling patent lawyers to see if his invention and a patent on it are worth pursuing, good luck with that. You are really the best judge of whether your invention is worth pursuing. A patent attorney with any experience is unlikely to say much in that regard.
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Old 01-17-2010, 03:18 PM   #29
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Hey, uh, I know this is a forum devoted to the goal of NOT working, but uh, are any of you patent attorneys hiring? Seriously, any idea if the demand for newly minted patent attorneys is starting to pick back up?
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Old 01-17-2010, 03:51 PM   #30
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From what I saw out there, and from what I have read online, while the IP market did definitely take a hit (not licensing though), it is no where near as bad as it is at the general practice firms. I also think the worst is now over. That said, as always, the firms really care about what kind of undergrad background you have, for prosecution, just passing the patent bar itself is not sufficient, though it is certainly necessary.

As a side note, I will also be out there in the patent attorney job market come summer when I graduate as a 3L. I'd also prefer a smaller (and more sane) setting, but I will take what I can get.
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Old 01-29-2010, 08:40 AM   #31
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Here's an update ... 2 of the 6 returned my call. My last pick (a young kid who just passed the test ... sorry fuego!) and my first pick (an old timer with 30+ years patent law). The young kid said he'ld have to talk to his "boss" and get back to me ... this is going nowhere.

Had a great chat with the old timer. Lots of war stories about pushing patents past "incompetent patent office employees who are working for the goverment because they failed thier tests". Also explained that patents need renewal fees at 3.5-4 years and 7 years. If these fees are not paid, the idea goes back to the public domain (anybody can pick them up).

So I asked him to spent 2 hours or less to determine if my idea is patentable. Not looking for as assesment of marketability (I'll take that risk). Just don't want to infringe on someone else's idea.

Stay tuned ...
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