Patents

We have obtained, licensed and enforced numerous patents for our clients.  Our client Feher Research Company has a worldwide portfolio of patents pertaining to climate-controlled cushions in vehicles, bedding and helmets, which are licensed to Amerigon and major car companies, bed manufacturers, helmet makers, etc.  We have litigated many patent cases, the highlights summarized on our “Recent Work” web page.

Patent Prosecution Begins With Effective Searching

The patent process typically begins with preparing a disclosure and sometimes a prototype, and prior art (earlier work of others) searching on the Internet and at the U.S. Patent & Trademark Office (PTO).  Some inventions can be effectively key-word searched, whereas others require manually going through the PTO records by class and subclass.  Prior art searches of varying quality are available from various service providers.  For the past 5+ years we have exclusively used a formerPatent Examiner who resides in Washington DC area, 35+ years experience at the PTO and instructor of other examiners, to do our searches, which we believe are of the highest quality.  As the entire patent process is one of collecting information and reacting and making informed decisions, the importance of this initial searching cannot be understated.

“The patent system . . . added the fuel of interest to the fire of genius.”
– Abraham Lincoln, 1859, the only U.S. President to hold a patent (No. 6,469).

Preparing A Patent Application Is An Intellectual Exercise

Assuming the prior art search is favorable, we typically prepare a patent application for our client.  This process may take a month or longer and involves writing the specification, professional patent drawings and claims.  We use a highly experienced outside draftsperson who prepares quality drawings that aid in effectively disclosing the invention and are seldom rejected for any technicality.  The claims define the legal boundaries of the invention, and writing quality claims is both a science and a creative art.  An array of claims of varying breadth are presented, the claims being as close to perfection as possible given that amendments may adversely affect our client’s patent rights.  Ideally we will exchange several drafts of the application with our clients seeking review and comment to end up with the best possible work product.

Personal Interviews Get Difficult Applications Through The PTO

Wait times to have applications examined vary by art unit at the PTO, but generally are 2 years or longer although there are ways available to expedite examination when needed.  This begins the important negotiation process between the Examiner and the Applicant’s legal representative.  The Examiner will almost certainly have some objections to the application, which is a long and complicated legal document, and there may be a difference of opinion as to patentability.  As we advise our clients, in recent years due to changes in the law, the standard for patentability has tightened up.  For example, the allowance rate at the PTO after having run at about 70% for many years, is down to about 40%  recently.  To combat the same, we often use an experienced patent attorney in DC area to go in and meet with Examiners in person.  This approach has been repeatedly successful for us, and is practiced by few law firms because they are reluctant to outsource paying legal work to others.  We have spoken to Examiners and received very positive feedback about our DC associate (e.g. “He is one of the best,” “Comes in highly prepared and with the right attitude to work something out,” etc.).  We find this works better than filing stacks of papers at the PTO, and creates less of a written record which may help in enforcing the patent later on.

Invention Promoters/Promotion Firms Scams

In an attempt to market their invention, some clients work with or consider working with such service providers, many of whom advertise on TV, and are experts at taking their customers’ money.  The Federal Trade Commission (FTC) regularly goes after these companies, and the PTO has a webpage listing complaints:  http://www.uspto.gov/inventors/scam_prevention/index.jsp.  These companies may also be involved in helping their customers do prior art searches and file patent applications, generally through searchers or attorneys who live in far-flung, low cost-of-living locations in the U.S. and whom the customer will never meet in person.  Any such company which requires a substantial upfront payment is suspect.  Amazingly, California has laws which require invention promoters to identify their success rate, how few of their customers make more money than they paid in, and yet customers still sign up for such services.  Unfortunately there are few effective short cuts in marketing a new invention.  Clients must be prepared to take an active role themselves, or find a competent licensing agent who will work for a percentage of any licensing deal.  There are such licensing agents for various industries.  For a time a client of ours who patented various new foods packaging was engaged with a licensing agent who specialized in that industry and had personal contacts with several food manufacturing companies.