In my last article I addressed fees that are necessary to obtain a utility patent in the United States. These fees should all be explained and confirmed in the retainer (employment) agreement between you as the client and your intellectual property attorney. This article addresses other important information you should know before you commit your time and money to pursuing a patent.
For example are you, as the patent hopeful and businessperson, realistic about your chances for obtaining a patent on your particular product or method? Does your retainer agreement warn you about ‘crowded art areas?’ In either event, you should commission an inexpensive patentability search for similar or identical products disclosed in U.S. patents and published patent applications. Such a search does not guarantee that you will uncover all the devices and methods that affect the patentability of your invention. However, it will provide an excellent idea of the scope and numbers of your invention, as well as which features are already in the art and which are not.
Keep in mind that a patentability search does not generally cover other kinds of documentation for previously existing subject matter. For example, a patentability search may not reveal a patent or patent application for a particular genetically engineered plant pigment. However, a search of the biologically scientific literature databases may disclose numerous genetically engineered plant pigments that are remarkably similar to your own. What you are looking for at this point is anything that is uncomfortably similar to your invention, even if it is not patented or “on the market.” Therefore, it is always a good idea to invest in this kind of a search, even if it only surveys patents and patent applications form the United States.
As mentioned in an earlier article, you must confirm the correct parties to the agreement. If the retainer agreement is between a corporation and the attorney’s office, then the retainer agreement should be clear on this identity. The corporation per se will never be the inventor, because in the U.S. inventors must be natural individuals. However, it is standard practice for inventors to contractually transfer ownership to a corporate employer, and the corporation proceeds to obtain a patent. Be sure that you can identify other persons if they are co-inventors and/or co-owners of your invention. To proceed in the patent office in a manageable and organized manner, you may require transfer of ownership and rights agreements for additional attorney and government fees outside the standard patent application retainer agreement.
With first time patent applicants, even sophisticated business people generally do not have a realistic perspective on the necessary technical detail for a U.S. utility patent application. There are several reasons for all this detail in addition to the legal requirements of the application. For example, as many technical details as possible must be included in the application, as they may be necessary to significantly distinguish your invention from earlier subject matters. Unfortunately, it is impossible to predict which technical features will “squeak through” until the patent examiner responds at least two years after filing your application. At that time, it is too late to add features to the original application, and events may have occurred so you cannot to refile for the original invention. So, when your retainer agreement confirms that that you agree to proofread, provide additional information upon request, etc., be pleased and relieved that you know your obligations at the getgo.
© 2012 Adrienne B. Naumann
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