Why Does an Inventor Need an Attorney?

Why you need help navigating the maze of paperwork, regulations and requirements.

Inventors are smart, resourceful people who spend a lot of time researching, experimenting, building, and creating something new and useful. If you are an inventor, you naturally want to reap the rewards of your hard work. US Patent law is designed to do just that for you. When you register a patent for your new invention, you are given a 20-year monopoly - the exclusive right to sell, distribute, and manufacture your invention for the next 20 years. But filing the correct paperwork, navigating the maze of regulations and requirements, and jumping through all the legal hoops can be confusing and intimidating. Simple mistakes such as not doing a thorough patentability search or incompletely filling out the patent application can get your application rejected, which can lead to losing all rights to your invention. After securing a patent, ruthless competitors and apparent business partners can extort the patent, costing you untold amounts of money. A patent attorney helps you navigate the patent application maze and guard against those who would steal your patent, saving you money and increasing your potential earnings.

The Patentability Search

This may seem strange, but the mistake often made by inventors is not checking whether the invention already exists. This simple first step can prevent wasting lots of time, effort, and money on an invention that cannot ever be patented. A patentability search is more than a Google search, and it can help the inventor determine if their invention is commercially worthwhile.

The patentability search and analysis are designed to search the world of patents and existing art to establish if the invention already exists. It can also find other patents that are similar to the proposed patent idea. If the exact product or an identical patent is found, then the inventor knows there is no way to move forward. If a patent is found that is similar, but not exactly the same, then a patent attorney can draft a patent application that only claims the new, patentable idea. Filing a patent application on a patent that already exists can, potentially, lead to forfeiting your ability to file a future patent application. Manufacturing, distributing, or selling a product that has already been patented can cause you to be in violation of the original patent owner’s rights and you could be sued.

The many rules and regulations involved in patent applications are incredibly detailed. The consequences of not complying with the many technicalities can result in forfeiture of important innovation rights. This can potentially strip an inventor’s exclusive rights to a technology, innovation, or invention, that can result in a significant loss of time, money, and resources. Having a patent attorney perform a patentability search, draft, and file the application and help you navigate the patent application maze will help you succeed and realize the rewards of your hard work and innovations.

Common Patent Application Mistakes

  • Not having a patentable invention. As mentioned above, doing a patentability search should turn up any patents that are similar to yours. United States is a first-to-file country, giving patent rights to whoever files the first patent application. With hundreds of thousands of patent applications filed each year in the United States, it is possible that someone still might beat you to the Patent Office. There are also some inventions that by their nature cannot be patented. Abstract ideas, mathematical formulas, natural laws or phenomena cannot be patented. Common items in current use cannot be patented. For example, you cannot patent a broom, even a newly improved broom, unless it did something substantially different than what is already in existence. For example, if your broom washed the dishes and made the bed, you may have something, but a broom that sucks the dirt while you swipe will not be patentable.
  • Picture1Not being specific enough in your patent application. The application needs to say exactly what the new invention does and how it does it. Someone reading the application should know exactly what is being described. A detailed description, drawings and accurate claims are your best weapons for a strong patent.
  • Not being timely with your patent application. There is a lot of controversy about who invented the telephone. Both Elisha Gray and Antonio Meucci invented a talking telegraph, but Alexander Graham Bell was the first one to get a patent for a working telephone filed.

    Many inventors have lost the right to a patent because they were too slow to file. An inventor has one year to file a patent application after the invention is first publicly disclosed, used, or sold. But even if you are the first one to invent a new product, you are not guaranteed the patent. Since the America Invents Act (AIA) of 2011, patents are awarded to the first one to file a patent. This means that even though you have a year to file a patent you may not get it. It is urgent to file as soon as you can because the first one to the patent office wins.
  • Filing a worthless patent application. In a patent application, the claim defines, in technical terms, the exact extent, scope, and purpose of the invention. If this claim does not meet the requirements of the patent office, or if it does not claim a patentable invention, the application will be denied. If you file a worthless patent application, you could potentially lose the ability to file a patent in the future. A patent attorney’s job is to ensure that the patent claim is professionally written and results in a successful patent application.

  • Not doing a patentability search. We have talked above about the importance of a patentability search. There are millions of US and global patents and an application for a current patent will be rejected if the same or similar invention is already on file.

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Patent Extortion

Patent extortion is when an individual or a company bypasses your existing patent and profits off your innovations. This has become much more prevalent in the United States with the rise of inventions and the small and mid-sized companies manufacturing, distributing, and selling them. Many of the companies extorting patents may be big, well-known, well-financed, or foreign. If you believe that someone or some organization is exploiting your patent, it is important to seek our help. We are familiar with patent law and the difficult process of protecting your intellectual property. There are six common strategies used to extort your patent.

  • Reverse Engineering. A common method is to purchase a product, study its features and functionality, and make a product that does the same thing without obviously copying the patented aspects of the invention. This is commonly done in computing when a software product or application is made, and then another company makes a product that does the same thing but does it a little differently.
  • Twins
    Twins Eating Ice Cream Bars" by donnierayjones is licensed under CC BY 2.0.
    Knockoffs. This is similar to reverse engineering but the object is to make the exact product cheaper. They are often sold as that product. For example, an expensive Rolex watch, Gucci handbag, or Nike sports shoes will be made to look exactly the same or remarkably similar to the original, but with inferior materials and workmanship, and sold as the authentic product.
  • Rollups. This is a long-term strategy of a company acquiring a manufacturer of a patented product or invention. Once the acquisition is completed, the purchasing company can strip the manufacturer of employees, assets, and products. This can be dangerous for the patent holder of the product that was being manufactured because once the manufacturer is depleted of funds, staff, and products, the purchasing company is in a powerful position to neglect duties, royalties, and other payments. The purchasing company relies on the fact that the acquired manufacturer will not have the funds to bring it to court.
  • Workaround. The workaround strategy is to find a patent idea with a weakness or a weak claim and design an improved product without infringing on the original patent. The goal is to change the product just enough to create ambiguity and claim non-infringement.
  • Licensing. A license between the patent holder and a company to manufacture, distribute, and/or sell the product is designed to protect the patent holder and to ensure that they are compensated for the use of their product. Some companies may try to take advantage of this relationship. For example, an exclusive license may give a company total control over the product line. They may try to hide sales, ignore license terms, or cease to make payments. Apex can help write license agreements that protect the patent holder and can help when there are disagreements between the patent holder and the licensee.
  • Patent Trolling. A Patent Troll is someone who buys patents cheaply, for example from a company that needs cash or is going out of business. Patent Trolls do not make anything or invent anything - they just own a lot of patents and then take legal actions against others for alleged patent infringement. They go after small and midsized companies who do not have the resources to contest the allegations and who end up paying an unnecessary or exorbitant license fee. Patent Trolls are a significant problem. They cost legitimate companies billions of dollars each year. If you believe you are being trolled and asked to pay unnecessary licensing fees, Apex can help.

The process of filing a patent can be intimidating to most people. A patent attorney can help you through the process from doing a patentability search to writing patent claims, to managing the many pitfalls of the process, and finally to protecting your patent.

Learn more about the patent application process.
What is intellectual property law?

Trademarks • Patents • Copyright

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What do you need to market an invention?

Patentability • Utility • Novelty

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What is the patent application process?

Options • Application • Filing

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