Patent scams do come in all shapes and forms—and I am not referring just to the people who advertise on tv (we will save that article for another day). I have never seen an ad for a patent attorney on tv (there are plenty of ads for invention development firms), but I have encountered a number of different patent schemes perpetrated by patent attorneys. I describe some of these schemes below, but there are two things you (as the client) can do to ensure that you are working with someone who is not only admitted to practice before the U.S. Patent and Trademark Office but also a competent patent attorney.
The first thing you can do is to look that person up in the patent office database: https://oedci.uspto.gov/OEDCI/. If you cannot find that person in this database, then he or she is not a registered patent attorney or agent. It does not matter that the attorney has litigated patent cases (he or she has never filed or prosecuted a patent application) or “managed” patent portfolios; if the individual whom you are considering engaging is not in this database, you should not retain him or her for the purpose of preparing, filing, or prosecuting (which means dealing with all the aspects of getting the patent through after it is filed) a patent application for you.
Once you have established that you are dealing with a registered patent attorney, the second thing you can do is look up how many issued patents that attorney has to his or her name. (I will leave agents out of this discussion for now; a patent agent is a non-attorney who is authorized to file and prosecute patent applications but who cannot do any other legal work, such as trademark filings, contracts, etc.) To conduct this search, go here (http://patft.uspto.gov/netahtml/PTO/search-bool.html); enter the first and last name of the attorney and select “Attorney or Agent.” When you view the results, keep in mind that anything beginning with the letter “D” signifies a design patent. There is relatively little legal work entailed in a design patent (design patents rely almost solely on the drawings), so the better measure of a patent attorney’s ability is the number of utility patents to his or her name. As of this writing of this article, our office has nearly 200 issued patents, roughly 90% of which are utility patents. You can also skim the list of titles included in the search results to ascertain whether the attorney has handled other patent filings in your industry (for example, firearms, agricultural equipment, medical devices, etc.).
In the two cases I am about to describe to you, the client could have avoided being the victim of a scam if these two steps had been followed. In the first case, I inherited a patent portfolio from a local client who had been working with a patent attorney in South Carolina for years. It took me about two seconds to enter her name into the patent database and discover that her name did not come up. That was the first red flag. Then I wondered how it was that she had “handled” this client’s patent filings for the past two years. This scam occurred back when the patent office was still accepting paper filings only, and her scheme was to mail things to the patent office, get a return stamped postcard from the patent office mail room, and then send a copy of that postcard to the client with a cover letter informing him that whatever it was (a new patent application, a response to an Office Action, etc.) had been filed. When I contacted the Office of Enrollment and Discipline (which handles all matters relating to the admission and practice of attorneys before the U.S. Patent and Trademark Office), I learned that this person had been disbarred several years ago and that none of her “filings” was actually being entered by the patent office. This meant that several of my client’s patent applications had been abandoned, unbeknownst to him. We did what we could to salvage the client’s patent portfolio, but the client never recovered any of the sums he had paid to this attorney.
Most patent filings today are handled electronically, which means that the “paper” scam just described would no longer work. Just a few weeks ago, however, I encountered the electronic version of this scam. My client had gone to someone who professed to be a patent attorney, that person had filed a patent application for this client, and the client had received a filing receipt issued by the patent office. In this case, the attorney who took the case was an attorney but was not admitted to the patent office. Because he was not admitted to the patent office, he could not file an application on behalf of the client, so he filed the application in the client’s name individually (In other words, he pretended to be the client when he filed the application). Thus, there was no attorney of record on file for this application (a fact which surprised the client when I pointed it out to him), and this attorney’s “fingerprints” were nowhere to be found in the electronic record. The prejudice to the client came when the patent office issued the first Office Action, and this attorney made arguments that fell on deaf ears because he was not intimately familiar with the patent prosecution process. Furthermore, the attorney took the client’s money without any meaningful discussion of patentability up front. The client ended up abandoning the patent application altogether.
The last type of conduct I think inappropriate when it comes to advising clients on patent matters is when the well-meaning general practice attorney (or, frankly, even an intellectual property attorney who is not a registered patent attorney) advises the client on patentability. In one case, a client of mine had first been to a general practice attorney who told her that her apparel-related product was not patentable. He said this without doing a patent search and without any experience whatsoever in prosecuting patent applications. I happened to agree with him in this particular case, but non-patent attorneys need to be very careful about rendering casual opinions about patentability because “simple” inventions (even in the apparel area) may very well be patentable. A case in point is the pre-curved fishing wader that our office has patented for Simms fishing Products; this invention is now patented in the U.S., Canada and Europe. For similar reasons, I would recommend not going to an attorney who dabbles in intellectual property law but rather one who specializes in that area.
Regardless of which law firm you ultimately decide to retain, take the two steps outlined above to ensure that you are working with someone who has the proper credentials and expertise to get the job done. Nothing in the patent process is guaranteed, but you can increase your odds of obtaining a return on your investment (in the form of an issued patent) by doing a bit of homework up front.
Antoinette (Toni) Tease is a registered patent attorney who practices in the areas of intellectual property and technology law.
Antoinette M. Tease, P.L.L.C. Toni can be contacted at: toni@teaselaw.com
The information is provided for informational purposes only and should not be considered legal advice. Please consult a qualified attorney for advice on a specific legal matter. © 2017 Antoinette M. Tease, P.L.L.C. All Rights Reserved. Visit www.TeaseLaw.com
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