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Should You Hire a Patent Agent Instead of a Patent Attorney?

To be honest, I've never hired a patent agent.

When I had my 'big' idea many years ago, I sought out a powerful Silicon Valley firm to write my patents. My thinking was: I want these guys to be able to defend my intellectual property if need be. And in fact, that's exactly what ended up happening several years later when I sued the world's largest toy company for infringement in Federal Court. Ultimately, my legal team at Carr & Ferrell settled two weeks before our trial date. It didn't feel like much of a victory, though, in the sense that it was a lengthy, emotionally taxing experience -- that I now believe could have been avoided.

Don't get me wrong. As a result, I was able to continue profiting from my rotating label innovation for the next 20 years. It was also a highly illuminating experience -- one that continues to inform how and what I think about the value of intellectual property today. We argued primarily over just two words, which were 'coupling' and 'uncoupling.' Those words are broadly defined, which turned out to be crucial.

But most of the time, these days, I advise my students to do the exact opposite of what I did. First, by encouraging them to focus on bringing simple ideas to market -- meaning ideas that can be licensed using only a provisional patent application. Speed to market is paramount. Bringing a big idea like my rotating label to market takes time, not to mention capital and potentially a wall of patents.

I've been writing about entrepreneurship and intellectual property for years now. My advice has always been: When it's time to write a non-provisional application, hire a patent attorney in case your day in Federal Court ever appears. But after a couple of recent interviews with patent experts, I think there are compelling reasons why you should consider hiring a patent agent.

How do patent agents and patent attorneys differ? Patent agents specialize in obtaining patents. Like attorneys, they're able to prepare, file, and prosecute patent applications as well as appear in front of the Patent Trial and Appeal Board. Unlike attorneys, patent agents are not capable of practicing law -- meaning they cannot give you any legal advice, such as advice on non-disclosure agreements, trademarks, patent licensing, and patent infringement. Put another way: They're not a one-stop shop.

According to patent expert Kevin Prince, the major advantage of working with a patent agent is most often price. Prince is a successful lifelong entrepreneur who has been passionate about helping inventors since he co-founded the Orange County Inventors Forum in 1990. The organization is still active today -- I just spoke there recently. In 2005, after becoming a patent agent, Prince founded QuickPatents. Today he employs three other practitioners, including two patent attorneys. Price-wise, Prince put his services in the "20-25 percentile range of patent prosecution fees charged nationwide." Unlike most patent attorneys, he charges a flat fee based on whether an idea is simple or complex. About 90 percent of the applications QuickPatents files, he said, fall into the simple category.

"Since patent agents are only focused on patent prosecution, I think we tend to relate better to inventors," Prince added. "I feel like I do, anyway, because I'm an inventor -- which is also why I became a patent agent. I want inventors to feel comfortable with me. I don't know if that's because I'm a patent agent though, so much as it is the difference between billable hours and flat fees."

When I asked Damon Kali -- a patent attorney similarly dedicated to helping inventors -- he agreed. Kali speaks to inventors groups around the country as well as appears on my YouTube channel inventRight TV.

"When you bill at an hourly rate, there's no incentive for clients to build a relationship with their attorneys. You're paying for every minute. That's one of reasons why I work a commodity model, meaning I estimate what my services will cost and usually stick to that," Kali explained. "I've been writing non-provisional patent applications for 14 years! I know how much this costs."

Like Prince, Kali is an inventor who has patented his ideas. Is the commodity model common among patent attorneys, I wondered? No, he said: He'd never heard of another attorney embracing the same model. "Hourly billing is the model, and it's an antiquated model for doing business today." Prince warns inventors to be careful not to write a blank check.

Whether you decide to work with an attorney or an agent, make sure the practitioner understands your goals from the get-go. After all, the scope of what you're trying to accomplish will affect what you pay.

"When you're starting a new business, there are so many opportunities to spend money," Prince said. "That's one of the big mistakes inventors make -- spending too much on a patent, on tooling and inventory, before testing to see whether the project is even a go." Prince is speaking from experience. Shortly after graduating from U.C. Berkeley with a degree in engineering, he told me, he made the mistake of putting in a large order for the CD storage invention he had patented. The minimum amount a manufacturer would agree to produce for him? 10,000 units. "I've had 5,000 boxes following me around ever since!" he exclaimed with a good-natured laugh.

Both Prince and Kali spend time talking to inventors about their business plan first. "One of the first questions I ask of inventors who are getting ready to spend money on application is, "How are you going to get that money back? Are you going to start selling product yourself? Are you hoping to license it? Very often, they don't know which way they want to go," Prince said.

We all agree: You need to know. In fact you really need to have thought it out. Like I detailed at length in my book Sell Your Ideas With or Without a Patent, the best way to approach filing intellectual property is strategically -- with an eye not just towards getting a patent, which is easy enough to do, but how you'll profit from it.

When asked about the capabilities of patent agents, Kali was effusive. "Most patent agents I've known are better than patent attorneys," he said. "They do more of the difficult work of drafting patents... they're really the workhorses of this industry. They're behind the scenes making lawyers look good. They really know their stuff and they're great at what they do!"

The downside is that patent agents can't advise you on the general practice of law, he said. Their focus -- for better or worse -- is narrow. Meaning your patent agent can't help you devise your entire strategy as it relates to intellectual property.

If you think you're going to be a $100 million-dollar startup, you need to hire a top intellectual property firm for venture capital, Prince said. But even then though, he added: "You could file a relatively inexpensive application and in the event you do get funded and your patent is still pending, have a different firm file continuations. It's a subtle strategy... and how you can still end up with a big law firm's name on your patent."

This strategy falls in line with his ultimate piece of advice, which is: Don't spend too much of your money. What you do spend, spend wisely!

After interviewing Kali, whom I've known well for some time now, I was curious. If patent agents were indeed the workhorses of the industry, was it possible they were actually writing most patents? Patents supposedly written by patent attorneys? I reached out to Gene Quinn, founder of the leading intellectual property blogIPWatchDog.com, for comment. (Full disclosure: I've known Quinn for some time now as well.) Like Prince and Kali, Quinn is committed to helping product developers bring their ideas to market.

How common of a practice is it among patent attorneys to hire patent agents to write their clients' patents for them? I wondered.

"Not too uncommon," he replied in an email. "If you go to a law firm and hire a partner level person, the likelihood is, the first draft of an application is going to be drafted by either a patent agent or an associate. The truth is that in the early stages to get through at least the first draft there isn't a lot extra a patent attorney, even an experienced patent attorney, brings to the table. At some point, however, when a draft is assembled it would generally be passed over to a more experienced patent attorney for revision and polishing. What comes out of that process should look substantially different and much better."

The operative words being, 'substantially different and much better.'

To Quinn, not thinking like a lawyer is problematic. "Patent agents can be exceptionally talented, very good writers, but even with the best there is something missing usually. They do not generally seem to have the same ability to understand changes to the law or what cases suggest needs to be done differently."

Very few patents ever make it to court, though. So I pressed him.

"The best answer I can give is this: By the time you realize that you are sitting on a million-dollar invention it will be too late to do anything about it.... Patent agents as a general rule tend to be very good at describing what it is that you as an inventor show up with.... What they tend to be much less good at is describing what your invention could be. They also frequently will use words that are more concrete and limiting than would a patent attorney. Attorneys are taught the art of both being hyper-specific, which is necessary at times, but also the art of being anything but specific. I wouldn't say vague because a patent cannot be vague."

Like I mentioned earlier, the 'anything but specific' nature of the words coupling and uncoupling in my patents proved to be extremely important.

Quinn said he tends to think the best relationship is one in which a patent agent works with a patent attorney. In the past, his partnership with an amazing patent agent led to the production of "exceptional applications."

And sure, he wrote, it's true: You can pay much less if the patent agent is the one doing much of the work. But if you can afford it, he believes it's best to have a patent attorney review, revise, expand, and polish your application.

"I think it's ethical for agents and attorneys to work on cases together -- to split their time thoroughly reviewing and crafting the document," Kali said. "I don't think it's ethical for attorneys to hire agents, and then bill their clients at their own rates for the patent agent's work."

To write the strongest patents possible, Prince said he keeps up with all of the software cases the Supreme Court is commenting on as well as best practices for writing in particular fields. He is currently trying to license one of his ideas.

In my experience, one of the most important questions to answer is: Does your practitioner have the right temperament? Meaning, will he or she be able to work with the patent examiner who reviews your application to overcome their objections?

That's really what getting a patent issued often comes down to.

Originally published on Inc.com October 26th 2016.

 

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