PATENTED INVENTORS: BY DEFAULT, IS YOUR PATENT IN THE PUBLIC DOMAIN?

© By Stephen Paul Gnass

When an inventor decides to work with a patent attorney, the patent attorney obtains a "power of attorney" which legally authorizes him to act on the inventors behalf for any filings, responses, actions, etc. related to the patent application. This is normal.

A good patent attorney not only keeps in touch with his clients periodically (written, and sometimes verbally), but also maintains correspondence with the U.S. Patent Office on behalf of his clients and sends his clients copies of all the correspondence.

However, in some specific cases where the patent attorney may be incompetent, or where the patent attorney works directly with a scam company, this important aspect of acting as a liaison between the inventor and patent office is missing.

Because inventors have placed their full trust in the patent attorney or firm that is handling the patent application, they end up being "out of the loop".

A Glitch in the Patent System

This is a glitch in the patenting system that causes inventors to lose their patents without their knowledge or awareness. In our mobile society, it is common for people to frequently move from city to city, or even state to state.

But if the patent attorney fails to file the change of address with the U.S. patent office, then the patent office will continue sending the mail to the patent attorney of record, or to the old address.

If the patent office sends the inventor any notices of maintenance fees due, or important information regarding appeals that must be replied to by certain due dates, and does not receive a response, the patent can be lost. It's that easy. For the most part, the patent office goes by the book, no matter who's fault it was that caused the deadline to be missed.

What inventors need to be aware of, is that the ultimate responsibility and accountability for filing the patent application lies with themselves. Anybody that the inventor is working with is a contractor that is working for him on his behalf. And it is up to the inventor to act as a "manager" of his own "crew". An inventor needs to periodically stay in touch with the patent attorney (or for that matter, any other vendor or contractor) to make sure that the patent attorney follows through with whatever needs to be done - including something simple like filing a change of address with the patent office.

Become Familiar with the Timeline for Filing a Patent

I believe that inventors need to be familiar with the steps of filing a patent - not necessarily all the details - but at least the general timeline of steps and patent office fees. For example, once the initial patent application is sent, inventors should know that it costs about "X" dollars and takes "X" weeks or months to receive a reply. Inventors should know that it is common for most patent applications to be rejected at least once, and they should realize that it then takes "X" dollars and "X" time to resubmit it again and receive another reply. They should know that the whole process of getting a patent generally takes "X" months from start to finish, and takes "X" time and "X" dollars if it is more complicated.

In fact, we recommend that inventors learn the process of patenting an idea, if at all possible. There is an excellent book titled "Patent It Yourself" written by David Pressman, a patent attorney. I believe that the more an inventor understands about how it all works, the easier it will be to cooperate and work synergistically with the patent attorney so that the patent reflects and protects the inventor's idea.(To find out about the book, visit NCIO's Online Bookstore at www.inventionconvention.com/ncio/books/patenting.html

You Can Still Be Trusting, But You Want To Be A Pro-Active Inventor

Bottomline, an astute inventor will appreciate a good patent attorney that stays in touch and keeps him abreast of all activities related to his patent, but the astute inventor will not just sit back and be passive. Instead, he will take the initiative to call or stay in touch with the patent attorney and will request copies of all patent office documentation to verify that the work has been done, instead of just relying on blind trust or what the patent attorney tells him.

In fact, any patent attorney that refuses to do this could be said to be "keeping the inventor in the dark" and there could be a possibility that the patent attorney is either incompetent or may even be working with a scam company.

On another note, make sure that you know how your patent attorney charges and the fees for out-of-pocket expenses like travel costs, mail, FedEx, telephone calls, etc. Usually they round off the billing in increments of 5, 10 or 15 minutes. Be sure to know the upsides and downsides of filing your patent application ahead of time so that everything is laid out on the table. You should be receiving paperwork automatically, but if you feel you need to call to follow-up, you need to know whether these status update calls will be billed or if they're included free with the charges you're paying.

Oh My God, My Patent Went into the Public Domain!

That's right, if you miss the important due dates for your patent, you will lose your patent. After you miss the deadline, there's a very short buffer period to reinstate it but the costs are prohibitive and may be a shock to your system. If this has happened to you, and you are still under the buffer period, I would only recommend it if your invention is viable and you are sure of its potential.

If you miss both deadlines, the patent office follows the rules of the book, and the patent will go into the public domain no matter whose fault it was. When a patent goes into the public domain, it means that it is owned by the general public. Nobody else will be able to get a patent on it, but now anybody can make, manufacture, and sell the product on the market without paying you anything.

In recap:

1. When you initially establish a relationship with your patent attorney, be sure to know where the paperwork is going to be mailed - to you or to the patent attorney.

2. If you move, let the patent attorney know as well as the patent office.

3. If you are unable to stay in touch with the patent attorney directly, and have to go through a company to find out about the progress of your patent, this is a major tip-off that this company could possibly be an invention submission marketing scam company. Once the invention scam companies have the bulk of the inventor's money, they usually will not return phone calls to their clients, and the inventor will not know about any important filings or responses that are due.

CHANGE OF ADDRESS FORM:
Here is the USPTO Patent Office form where you can change the correspondence address for your patent.
http://www.uspto.gov/web/forms/sb0081.pdf

Situations like these, that I describe in these articles, are snapshots at the time that I write them. Things may change, for example, U.S. Patent and Trademark Office rules may change, etc. In addition to the constant research that we're doing, I would like to personally speak with anyone that has had a similar or related experience. Feel free to email me at subscribers@inventionconvention.com and include the best time to get in touch with you.

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ABOUT STEPHEN GNASS:
Stephen Paul Gnass is founder of InventionConvention.com, Executive Director of the National Congress of Inventor Organizations [NCIO] and an inventors advocate. Mr. Gnass speaks on the subject of the "Business of Inventing" [tm] and has had his articles reprinted in various magazines. As Senior Consultant with the Gnass Group, he consults independent inventors, entrepreneurs, and small businesses. He can be emailed at gnass@businessofinventing.com or visit www.businessofinventin g.com.

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A SPECIAL NOTE: Complimentary Brainstorm:
If you're further along the path of inventing and are ready to launch your product, and need assistance in determining whether to license your idea or build a company around your invention, I'll be more then happy to offer you a Complimentary Brainstorm, no obligation. For a Complimentary Brainstorm, please be sure to include your phone number with area code and your time zone [continental U.S.] with the best times to call you back in your email. If you're in Canada or another country, email us for special instructions.
Sincerely Stephen Paul Gnass

P.S. I offer additional brainstorming as part of the cyber- exhibiting program. Or, if you have special projects or problems and you need some brainstorming, I also offer a-la- carte consulting sessions with a special rate for inventors.

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Disclaimer:

Situations like these, that I describe in these articles, are snapshots at the time that I write them. Things may change, for example, U.S. Patent and Trademark Office rules or laws may change, etc. In addition to the constant research that we're doing, I would like to personally speak with anyone that has had a similar or related experience. Feel free to email me at subscribers@inventionconvention.com and include the best time to get in touch with you.

This article is for general information purposes only and is not a substitute for legal counsel or financial services. The information provided is accurate to the best of our knowledge, and we are not liable for any omissions or incorrect information. It is the responsibility of the reader to verify any legal information with appropriate professionals. If you need specific legal assistance, we recommend that you contact an attorney or accountant.

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Contents, Layout, Style and Source Code Copyright 2003-2011. Stephen Paul Gnass. All rights reserved.

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