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[duff2beat]

Now that I'm licensed with the USPTO, I've already gotten about half a dozen friends and acquaintences ask me to help them patent their ideas. Whether they'll actually follow through is another question...

Nevertheless, the question is raised of whether I should take on this kind of activity without having worked under another practitioner's tutelage for a while.

Thoughts?

[Guest]

1.  Tell your friends to write down their ideas, sign, date and have a witness sign and date.  

2.  Tell them to start saving their money because patent prosecution can range from $1,500-10,000+ just for the various fees, not including maintenance fees or attorney/agent fees.

3.  Get malpractice insurance.

4.  Have your friends sign waivers acknowledging and understanding that you are inexperienced and promising not to sue.

5. Have your friends sign waivers acknowledging and understanding that any patent you get them will probably be more narrow in scope compared to what an experienced practictioner could have gotten.

6.  Have your friends sign waivers acknowleding and understanding that any patent you get them may not hold up in court during litigation.

Seriously, find someone to apprentice with because passing the exam has nothing to do with prosecution.  At the very least, read "Landis on the Mechanics of Claims Drafting" and several patent file histories (some newer files are available through the USPTO PAIR website).  If you can bring your own clients, an established attorney/agent may be more willing to work with you.

[Wiscagent]

I assume that "Guest" is being somewhat facetious; regardless of that - suggestion 4 appears to be in direct conflict with 37 CFR 10.78:

  A practitioner shall not attempt to exonerate himself
  or herself, or limit his or her liability to, a client for his
  or her personal malpractice.

Richard Tanzer

[Bill Richards]

I think "Guest" was speaking tongue-in-cheek to make a point.  Main point -- get help/mentoring before you take on any case.

[LF]

The recommendations are on the money, even the tongue in cheek ones. I am assuming you would be willing to give them a price break over what they would pay an agent or atty. (Else what kind of friend are you!).

Every case is different, but what you will get as a patent (and its protection) is going to severely depend on the complexity of what they want.  The fees are not going to be $10K, but they are going to be at a minimum $1,200 ($415 small entity to apply using the ABX version), $700 to $1,000 issue fees (assuming nothing catches you along the way (which it will)). So bottom line, they will invest more than "beer" money (unless they drink a LOT), but then again, with a non-provisional patent they will have something they can potentially license, even if the claims were not as broad.

As for language on the application, plagiarism is the sincerest form of flattery, so flatter away.

Now, their other option is to really go after these ideas, something they will probably not do. If they do, they will probably spend at least $5K, with an internet outfit, and at least $12-20K with a top 10 firm (that, is a LOT LOT LOT of beer).

And yes, no matter how much you explain this to them, they will probably not understand it. Now, from there to suing you for malpractice (assuming you don't do something stupid like miss the dates, etc.), that's a good question. I don't know the answer.

A friend of mine (an agent for over 8 years), suggested that you contact someone with 5+ years of experience, and pay them a couple of hours to go over your application and advice you about any shortcomings. Maybe you and your friend share this charge to show him you are not just out to scam him/her. Bottom line, if you're concerned about getting a job in this area, any experience is better than just shipping resumes (which you should be doing anyway), and going through the process will really show you how little one knows.

Best of luck,

LF

[Isaac]

The recommendations are on the money, even the tongue in cheek ones. I am assuming you would be willing to give them a price break over what they would pay an agent or atty. (Else what kind of friend are you!).

I respectfully disagree.  Getting clients to sign the waivers recommended in items 4-6 would violate the rules of ethics for attorneys if not for all patent practioners.  

[prosdog]

I respectfully disagree.  Getting clients to sign the waivers recommended in items 4-6 would violate the rules of ethics for attorneys if not for all patent practioners.  

I respectfully agree with your disagreement.  Matter of fact, there was a question on the Patent Bar exam I took last week that touched on the issue.  Waiver of liability was one answer choice of a question where you had to pick the right answer.  Obviously, that was one of the wrong ones.

[Isaac]

I respectfully agree with your disagreement.  Matter of fact, there was a question on the Patent Bar exam I took last week that touched on the issue.  Waiver of liability was one answer choice of a question where you had to pick the right answer.  Obviously, that was one of the wrong ones.

Can you reconcile your position with 37 CFR 10.78 which appears to suggest exactly the opposite of what you suggest?

Also a couple sample attorney bar rules.

NY professional conduct rule:

"A lawyer should not seek, by contract or other means, to limit prospectively the lawyer's individual liability to the client for malpractice nor shall a lawyer settle a claim for malpractice with an otherwise unrepresented client without first advising the client that independent representation is appropriate. "

DC Rule 1.8

(g) A lawyer shall not:
    (1) Make an agreement prospectively limiting the lawyer's liability to a client for malpractice; or
    (2) Settle a claim for such liability with an unrepresented client or former client without first advising that person in writing that independent representation is appropriate in connection therewith.

Lawyers are also subject to rules which require that they not to handle matters which they are not competent to handle without associating with another attorney.

Without knowing what question "waiver of liability" was the wrong answer to, I cannot comment on whether the question on the patent bar supports your position or mine.

[Bill Richards]

Similar rule in Ohio for attorneys.

[Guest]

I think "Guest" was speaking tongue-in-cheek to make a point.  Main point -- get help/mentoring before you take on any case.

Mr. Richards is completely correct in regards to my previous post, however, I need to be more careful in my future posts since you guys exemplify the attention to detail that is required of a patent practitioner.  

[Isaac]

Actually Mr. Guest, I think your post was just fine.

[guest]

1.  Tell your friends to write down their ideas, sign, date and have a witness sign and date.  

2.  Tell them to start saving their money because patent prosecution can range from $1,500-10,000+ just for the various fees, not including maintenance fees or attorney/agent fees.

3.  Get malpractice insurance.

4.  Have your friends sign waivers acknowledging and understanding that you are inexperienced and promising not to sue.

5. Have your friends sign waivers acknowledging and understanding that any patent you get them will probably be more narrow in scope compared to what an experienced practictioner could have gotten.

6.  Have your friends sign waivers acknowleding and understanding that any patent you get them may not hold up in court during litigation.

4.  (currently amended) Disclose to your friends that you are inexperienced.

5. (currently amended) Disclose to your friends that any patent you get them will probably be more narrow in scope compared to what an experienced practitioner could have gotten.

6.  (currently amended) Disclose to your friends that any patent you get them may not hold up in court during litigation.

I was unable to figure out how to cross out and underline to make the response look more authentic.

[Bill Richards]

"Guest" needs to take the weekend off!  But, very clever.

[Isaac]

I want to apologize to prosdog.  I misread his comment as disagreeing when he was in agreement.

[Bill Richards]

So much for our "attention to detail".