To Trust or Not To Trust; Non-Disclosure

[listenup77]

California. I am going to hire this law firm in VA. to do my non-provisional application. Can I really trust a lawyer or agent (with confidence) and disclose all parts of my idea and provide them with a copy of my provisional patent application (filed earlier). I read this on the United Inventors Association website:

"3. Integrity of the disclosee - There is an old adage that a contract is only as good as the person signing it. One is safer using an NDA with those people of known high integrity and is of little value with person having low integrity. This integrity problem is compounded with the inventor's inability to monitor the disclosee."

Someone from the law firm can just tell a friend and that friend can go and file a provisional application or profit from your idea. How will you ever know that is a friend, of a friend, of the person in the law firm? It will be almost impossible to trace the leak back to that person in the law firm. This is possible. So there goes my one great idea, out the window. So I need help with this trust dilemma and precautions to take, even when working with a law firm. Sorry, no offense meant to the lawyers and agents on this forum.

 

[seniorjudge]

Do some background search on the law firm. Ask them if they have clients who they would allow you to talk to them. (Don't be surprised if they say no.)

In a nutshell, never do business with a lawyer you cannot trust.

 

[divgradcurl]

California. I am going to hire this law firm in VA. to do my non-provisional application. Can I really trust a lawyer or agent (with confidence) and disclose all parts of my idea and provide them with a copy of my provisional patent application (filed earlier). I read this on the United Inventors Association website:

"3. Integrity of the disclosee - There is an old adage that a contract is only as good as the person signing it. One is safer using an NDA with those people of known high integrity and is of little value with person having low integrity. This integrity problem is compounded with the inventor's inability to monitor the disclosee."

Someone from the law firm can just tell a friend and that friend can go and file a provisional application or profit from your idea. How will you ever know that is a friend, of a friend, of the person in the law firm? It will be almost impossible to trace the leak back to that person in the law firm. This is possible. So there goes my one great idea, out the window. So I need help with this trust dilemma and precautions to take, even when working with a law firm. Sorry, no offense meant to the lawyers and agents on this forum.

seniorjudge is right, don't use a lawyer you can't trust.

But, on the other hand, there is no reason to be paranoid about things. Despite what inventors might think, the actual value of most patents is very nearly zero. Very few inventions ever make the inventor rich. Some do, so I'm not trying to dissuade you from filing your application, but the fact is, most lawyers make more money on average from filing the applications than they would if they were the inventors trying to develop, sell, and market the inventions. If lawyers or agents did what you suggested, which is steal the ideas for themselves or for their friends, at a minimum they would be disbarred, and they could potentially go to jail. Simply put, there just isn't the incentive to steal inventor's ideas.

And even if they did steal your invention and patent it themselves, its not the end of the world -- if you have evidence that you are the true inventor, there are legal remedies available. However, I don't know of a single case where the allegation was a lawyer stealing an inventor's invention and patenting it themselves. Doesn't mean there isn't one, just that it can't possibly be a widespread abuse. Stealing your money, that I can see, but your invention, probably not.

Of course, this does NOT apply to invention submission companies, they will likely try and rip you off however they can, both your money and your ideas.

If you have a reason to be uncomfortable, find another attorney -- there is no reason to put yourself through the stress of worrying about things if you don't trust your lawyer, and there are 40,000+ registered patent attorneys and agents currently active in the U.S. -- find one you trust. But if you are just feeling generally paranoid, there probably isn't anything to worry about -- tens of thousands of patents get filed and issued every year without trouble.

 

[listenup77]

Thanks. Question to all, is experience a big issue in preparing a non-provisional application? I mean, there is a standard format that is used. I found this law firm that started out specializing in Trademarks. They are now working with patents and have a limited amount of patent applications they have submitted (maybe about 4-5 in the last year). The lawyer is registered to practice before the United States Patent and Trademark Office and is licensed in California to practice Intellectual Property Law. Because of their limited experience, their prices are half of what others charge. This is a registered law firm. I figure, they know the law and are registered, what can possibly go wrong in writting a utility patent application? What do you think? Would there possibly be a legal issue (meaning, leaving my invention open to being stolen) in having a lawyer with limited experience in patent application writting? The savings are $2,500 plus. Thanks.

 

[seniorjudge]

Q: I figure, they know the law and are registered, what can possibly go wrong in writting a utility patent application?

A: Lawyers are involved.



Q: Would there possibly be a legal issue (meaning, leaving my invention open to being stolen) in having a lawyer with limited experience in patent application writting?

A: 99.99% of all patents are worthless; the lawyers will make more money off you than if they stole your invention.

 

[listenup77]

Worthless? Worthless in what way? If the invention or idea is great, why would the application or patent be worthless. The drawings are there showing what the product is and so is the explination of the invention or product (no one can do the samething if patented). "lawyers are involved", how can someone justify doing the samething that is already patent, what can possibly be their agruement? Please explian some more.

 

[divgradcurl]

Worthless? Worthless in what way? If the invention or idea is great, why would the application or patent be worthless.

While is disagree with seniorjudge's 99.99% number, there is no getting around the fact that the overwhelming majority of patents fail to even provide enough of a return to pay for the costs of obtaining the patent in the first place. There are a number of reasons for this:

1. Many patents are simply "defensive" patents -- bascially, by building up a large enough patent portfolio, a company can avoid getting sued -- or at least force a settlement -- if they have a lot of patents that can be asserted back against anyone that might try and sue them.

2. And the flip side is "offensive" patents, where you can seek a settlement or licensing terms by simply overwhelming the other side with the sheer number of patents you have -- even if only one or two might really be valid and enforceable, the other side has to spend the money to analyze dozens or even hundreds, and it just makes sense to settle in most cases.

In these two cases, the value of each individual patent is rarely tested, and the value is in the portfolio, rather than in any individual patent.

3. However, for most individual or solo inventors, the reason why most patents are worthless can fall into one of two camps:

-- a poorly drafted or poorly thought-out patent may be so easy to design around that it is essentially worthless, because it is unenforceable; or

-- sorry to say, but most inventors have a very overly-optimistic view of the value of their invention in the marketplace.

Now, none of these things mean that YOUR invention is worthless, or that YOU are overly optimistic -- it just means that history shows that this is the case for most patents, and that's why seniorjudge wrote what he did (although I think he is overly pessimistic!).

Some patents and inventions are quite valuable, and a well-drafted patent on a key invention may be very valuable -- but most aren't, and that's a fact.

Question to all, is experience a big issue in preparing a non-provisional application?

Yes, because a failure to properly disclose your invention in the provisional could mean the loss of a priority date. This is a VERY big problem with people and practitioners who treat a provisional as a "throwaway" sort of application, and just throw something down to nail down a priority date. If such a "casual" application is filed, if the priority date every became a factor in a litigation down the road, that "casual" application could come back to haunt you.

Just FYI, at my firm, when we file a provisional, we draft the ENTIRE nonprovisional application, including the claims -- that's the ONLY real way you can make sure that your invention is fully disclosed and that your eventual claims will be fully supported by the specification. The only thing we don't finalize on a provisional is the drawings, we usually file with informal drawings -- but the spec and claims are COMPLETE.

Because of their limited experience, their prices are half of what others charge. This is a registered law firm. I figure, they know the law and are registered, what can possibly go wrong in writting a utility patent application?

What can go wrong? A lot. Claim drafting is more of an art than a science. It's easy to draft claims that will be "allowed" by the USPTO -- it's a lot harder to draft claims that will be allowed yet still provide any significant level of protection for your invention.

That said, lack of experience may not be an issue -- they may have a very talented patent drafter on staff -- and a lot of experience doesn't guarantee top results. But, on average, proper patent drafting is something that requires practice and, like everything, generally gets better with experience.

Ask them how they draft their provisional applications -- if they don't draft claims, ask them how they can be sure that the provisional properly discloses the invention and provides enough support for the claims.

Would there possibly be a legal issue (meaning, leaving my invention open to being stolen) in having a lawyer with limited experience in patent application writting?

The lawyer isn't going to steal your invention, as I noted before. If you are so worried about your invention being stolen, write the application yourself.

 

[seniorjudge]

...While is disagree with seniorjudge's 99.99% number....

Okay, I'll reduce that to 99.98%.

I think it's funny when someone shows me a website or advertisement for some scam (perpetual motion or a device that gets 110% energy return, etc.) and, when I point out that whatever it is violates the laws of physics, I get: "But it is PATENTED!"

 

[listenup77]

Fustrated! This provisional application option was suppost to help independent inventors not have to spend too much money before actually testing the product/market. But, every lawyer I've called ask for thousands (just to start) for a provisional patent application b/c they do the samething your law firm does, "when we file a provisional, we draft the ENTIRE nonprovisional application, including the claims -- that's the ONLY real way you can make sure that your invention is fully disclosed and that your eventual claims will be fully supported by the specification." So they charge a large amount for the provisional and then much lesser to complete the non-provisional application, b/c it's basically already done. I know this is to their advantage b/c if the person decides not to continue, they have received the larger portion of the money from you. I don't have 2-3,000 dollars to put down now for a provisional, but in a few months I would have saved it up. Meanwhile, what can someone like me do to get some decent protection. I've done the search with the lawyers (that was more affortable), I've sent out a description with drawings of my invention, but like you said, "that casual application could come back to haunt you." And I don't want that. I have a simple and marketable product and just want some real protection to give me time to save up the money to get a patent and to develope it. What to do? What advice can you give me? I've been thinking and pondering over this dilemma for days. Every comment is appreciated.

 

[divgradcurl]

I know this is to their advantage b/c if the person decides not to continue, they have received the larger portion of the money from you.

Patent attorneys and agents don't do this to get more of your money -- they do it because it is the only way to make sure that your patent will be completely valid and enforceable and entitled to your early priority date. Look at it from the other point of view -- if they did a "quick and dirty" provisional for you (but knowing that it may not fully disclose the patent), and you later on lost an interference battle or otherwise had your patent render invalid or unenforceable, you would then go and sue your attorney for malpractice, or would you just say, oops, next time I'll listen to the professionals?

I'm not going to defend the entire legal profession, I know that there are attorneys out there that use their positions to overcharge clients and do unecessary procedure to drive up the billings. However, this isn't one of those times. If you want an enforceable patent that is completely valid back to the filing date of the provisional application, this is the only way to ensure that.

I've done the search with the lawyers (that was more affortable), I've sent out a description with drawings of my invention, but like you said, "that casual application could come back to haunt you." And I don't want that.

There really isn't anything else you can do to protect your invention. You either file a patent, or you don't. You either file a provisional, or don't. You either file a complete provisional, or you risk having your utility patent invalidated or not valid back to filing date of the provisional. There just isn't any way around this.

So, you have 4 choices that I can see:

1. Figure out how to pay the several grand to get a solid provisional put in place;

2. Do a quick-and-dirty provisional, and hope that is does not end up costing you too much down the road;

3. Continue to complain about how unfair this all is; or

4. Get a couple of books and learn how to draft your own application. That will require the most work by far, but will likely be better than a quick-and-dirty provisional, and will likely be less expensive than hiring someone to do it for you. Of course, then you won't have anyone to sue for malpractice, if it comes to that.

Like I said before, I'm not here to defend the legal profession, but sometimes there is a right way to do something and a wrong way to do something; in this case, the right way to do something costs money -- and it costs money because its a lot of work to do right.

 

[listenup77]

Man, well put. You are clearly and patiently right. I just need to come up with the money and stopping looking for a temp/easy was to do this. I know if my product becomes a success, the vultures will come out and I need to be protected. I found a law firm that just started writting up patent applications, but they started as a Trademark law firm. They are asking for $500 for the provisional prep. and that is very affortable, but they aren't too experienced. Even without the extensive experience, they will be able to do a much better job on a provisional and later I can go with the more experienced lawyers, when doing the non-provisional. Thanks again for the the help, I really appreciate it.