Thrift pays with United States patent protection

Most people are aware that patents are expensive to obtain, maintain and defend. But, do business owners/inventors realize that obtaining patents may be less expensive than they would predict? Consequently, business owner should know to a certainty which expenses are necessary or optional.

Suppose you must decide whether to foot the bill for your patent attorney to travel to Washington, D.C. Unlike other government agencies with offices in numerous American cities, Washington, D.C. is the only location of the United States Patent & Trademark Office. Now imagine that the trip is for presentation of your rejected application by your attorney in person before the patent office administrative court.

It may surprise you to learn that your attorney’s personal presence in Washington, D.C. is unnecessary for the appeal process. And, you do not require the presence of your attorney to tip the balance in favor of winning the appeal. All the law requires is that you submit one extensive paper known as an appeal brief. This brief presents your legal arguments, the evidence you presented to the examiner, and why your application should become a patent. Your attorney may submit a second, shorter brief after the examiner responds to this initial brief.

My office prevailed on an appeal by submitting a single brief by mail to the Patent & Trademark Office. My office has also prevailed in pre-appeal proceedings, again by submitting a single brief by mail. This mail submission of briefs is tremendously less expensive than fees for the attorney’s actual legal work in Washington; your attorney must submit the briefs in any event. There are also expenses for meals, travel and lodging, but nevertheless should you invest in your attorney’s trip?

The somewhat equivocal response is: it depends. If you find your attorney to be a terrific engaging speaker who could convince administrative judges that your case is strong, then invest in the additional expense. The same would be true if the government examiner rejected your application several times, and you must consider authorizing your attorney to speak to the examiner in person. This kind of personal interview requires different skills than an appeal presentation. Nevertheless, if your attorney can convince an examiner without becoming perceptibly impatient and frustrated, then go for it.

A final word on behalf of financial restraint at this point. You only require one attorney in Washington, and not an entourage, for an appeal or an examiner interview. Also, your own presence as the inventor or patent application’s owner is unnecessary, so save your travel money for a real vacation!

© 2010 Adrienne B. Naumann

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