Most anyone who has been involved in the filing of a non-provisional patent application at the U.S. Patent and Trademark Office (USPTO) will tell you this – the patent process is complicated. It is full of strange rules. To make matters worse, these rules seem to be in a constant state of flux. As a result, the patent process presents many potential pitfalls for inventors, and especially for those who decide to prepare and file themselves as “pro se” or without the advice of counsel.
Many patent practitioners can recall stories where pro se applicants have ultimately turned to them to fix their patent applications, or to otherwise complete prosecution from the inventors at the USPTO. Some of these stories are quite famous, including the story of the Wright brothers’ patent attorney, Harry Toulmin, to whom the brothers turned after the patent application they had drafted themselves was rejected by the USPTO.
Unfortunately, depending on the state of the patent application filed, or the point in the process at which the patent practitioner is approached, the practitioner’s ability to help the inventor may be very limited.
For at least these reasons, the importance of using a registered patent attorney or agent for preparation and filing of a non-provisional patent application cannot be over-emphasized. Registered patent attorneys or agents are individuals who have been licensed and are regulated by USPTO. Both patent attorneys and agents must pass a rigorous examination administered by the USPTO, and registered patent attorneys are also members of a state bar.
A list of registered patent practitioners is maintained at the USPTO website here, and may be searched to locate a registered practitioner near you.
Inventors should also be wary of using so-called “invention promoters.” An invention promoter is defined by 35 USC 297 as being any “person, firm, partnership, corporation, or other entity who offers to perform or performs invention promotion services for, or on behalf of, a customer, and who holds itself out through advertising in any mass media as providing such services.”
Invention promotion services are defined as being “the procurement or attempted procurement for a customer of a firm, corporation, or other entity to develop and market products or services that include the invention of the customer.”
The USPTO publishes complaints made against invention promoters, which may be found here.
For more information from the USPTO about invention promoters and scam prevention, we encourage you to visit the USPTO Scam Prevention Website here and the Federal Trade Commission (FTC) Consumer Information on Invention Promotion Firms website here. The USPTO also publishes a great pamphlet with information on how to avoid scams by invention promoters here. Note especially the list of questions that invention promoters are required to answer by law (i.e., the American Inventors Protection Act of 1999). Complaints against invention promoters may also be filed with both the USPTO and the FTC using the forms found here and here, respectively.
In sum, if you are inventor interested in obtaining a patent, we recommend that you search for and speak with an experienced registered practitioner before moving forward into the patent process.
Likewise, if you have been the victim of a scam, it may also be in your best interest to speak with a registered practitioner sooner rather than later.