Do-It-Yourself Could Do You In

Use step-by-step, do-it-yourself books or computer programs only as primers. These books have a wonderful tutorial benefit, but it’s reckless and foolhardy for those not skilled in patent specification preparation, particularly claim drafting, to do it for themselves.
“Applying for a patent seems easy. Just describe what your invention is all about, fill out a form, pay the filing fee, and presto! You’re done,” quips Dinesh Agarwal, Esq., a skilled and artful patent attorney of mine from Alexandria, Virginia. Dinesh, a 25-year patent attorney, was selected among Virginia’s “Legal Elite” (Best Lawyers—Intellectual Property) in 2004 and 2006.
“But wait,” he says. “Did you include a ‘written description’ of the invention? Did you provide ‘enablement’? Did you disclose the ‘best mode’ for carrying out the invention?” Multiple statutory provisions and rules apply to a patent application that matures into a patent.
Dinesh continues, “A patent is a form of contract. It is a contract between you and Uncle Sam. Would you sign an important contract without the benefit of legal counsel? Would you think of buying real estate without a qualified surveyor or real estate lawyer? You should not apply for a patent without hiring a patent attorney. A patent confers upon an inventor property rights similar to real estate or owning an automobile. You just can’t see or touch it. It’s called ‘intangible’ personal property rights.”
According to Dinesh, a patent attorney can …
◆ Navigate the complex maze of laws/regulations that can affect your rights.
◆ Stop you from becoming a villain to your own invention, e.g., engaging in activities that might bar you from obtaining a patent.
Competent patent counsel can also determine, early on …
◆ The scope and content of protection to which you may be entitled under the law.
◆ Whether your product might infringe on a third party’s patent.
◆ How to avoid infringement of a third party’s patent.
◆ Whether you should license or purchase a third party’s patent.
◆ How to build your intellectual property (ip) portfolio.
◆ How to use patented technology without paying royalties.
◆ How best to protect your invention inexpensively and mark your products as “Patent Pending.”
◆ The state of technology in a desired area.
◆ How to improve upon an existing technology.
◆ How to avoid mistakes of others in a desired technical area.
◆ The potential competition in a desired technical area.
He or she can also …
◆ Draft the application to satisfy the applicable statute and regulations.
◆ Draft the application to receive the proper scope of legal protection.
◆ Draft the application to avoid pitfalls or landmines that might later blow up when, for example, you’re about to dominate the market.
◆ Shepherd your application through the USPTO corridors for proper review and consideration.
◆ Deal with the incredibly busy examiners who will approve (or disapprove) your application.
◆ Obtain patent protection in foreign countries. (A U.S. patent is effective only in the United States.)
◆ Maintain enforceability of the patents.
◆ Negotiate licenses and royalties with third parties.
◆ Deal with potential infringements by third parties.
In summary, a patent attorney can assist you in determining, early on, how to use your invention as a sword or a shield.
A patent is a form of lottery ticket. It’s the Big Spin. The invention it covers may hit pay dirt. Therefore, you want to make every effort to ensure a patent has teeth and cannot be easily attacked. Patent attorneys aren’t perfect, but if you are working together with your attorney, your claims will more likely be stronger.
You can do your own income tax. For people who don’t make a lot of money, this may be the most cost-effective way to deal with the IRS. But those who have substantial earnings or estates hire CPAs. They don’t do their income tax with a self-help book—they have too much at stake. Wealthy people use CPAs to level the playing field and give themselves every benefit of the law. Inventors should do the same through the counsel of a patent attorney.
Here’s another way to look at it: if you bought a state lottery ticket and hit the big prize, such as a multistate purse, would you purchase a do-it-yourself book on income tax or would you hire the best CPA to help you keep as much of the money as possible under the law?
Patents are invaluable if a product hits the mother lode, and therefore must be afforded every advantage. So even if you really know your stuff, I recommend that you have competent counsel review your work. There’s no guarantee that a licensed practitioner won’t make a mistake, but if he does, he’ll know how to correct it—and he carries malpractice insurance. Do you?
Bottom line: smart inventors use experienced advisers to ensure they obtain the strongest protection available on their inventions.
Bright Ideas
As a visitor to Labrador in the early 1900s, Clarence Birdseye was impressed by the quality of the fish and game the Eskimos froze. In 1924, he started the Freezing Company, and this kicked off the frozen fruit and vegetable industry. Birdseye was granted a patent in 1930 for his method of packaging frozen food.
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