Tuesday, 15 October 2013

The Fantastic Mr Fox

If you liked the film,
you'll love the patents ...
The following, penned by our colleague Michael Factor and with a response from Steve Fox, should be of considerable interest to those readers of this blog whose expertise lies in patents. Michael writes:
Steve Fox is a sole practitioner in the US. He has an interesting business method. He is prepared to file a US provisional application for clients as a free service (see http://www.foxpatent.com/).

As I am not licensed in the US, I don't file provisional applications directly. I don't help clients fill out the forms but can refer them to an associate. However, most associates take $250 or more for filing a provisional application. Steve's offer to do it for free therefore represents good value for money.

So is Steve Fox merely a bright-eyed, bushy-tailed member of the genus vulpes, or is he a competent practitioner?

Well, US 8,521,592 is a patent he drafted and prosecuted for a business method invention. The claimed invention is almost pure software, but it still issued. It seems that Steve is competent at drafting and prosecuting this type of invention in the US, which is not easy. "
Steve comments:
"I have been a patent attorney for over 24 years. My Reg. No. is 33,237. Unfortunately, there are not many people below that number left. I am attempting to offer this service for several reasons:

(1) Any inventor can file his/her own patent application if he/she knows how to use the USPTO system -- which is not difficult for anyone reasonably competent with a computer. As part of my Representation Agreement, the client agrees that I will file the application without any review, especially, as to whether or not the specification would enable claims filed in a subsequent non-provisional utility patent application. Now that the US is a first to file system, it is even more critical to file a provisional application that completely discloses the invention as it will be claimed.

(2) After receiving an explanation as to what US law requires, I believe most inventors will wish me to review and revise the provisional application for a reasonable fee, depending upon the complexity of the invention;

(3) When the time comes to file a non-provisional application, I hope that some clients will have me handle the work; and

(4) I need work. Sole practitioners are losing so much work to companies like Legal Zoom. I do not feel my approach is a bait and switch. Actually, it is my way of doing a pro bono service if the inventor wishes with full knowledge of the consequences, and at the same time, attracting work at a reasonable price. Do you feel this is a bait and switch, unethical or stupid?"
Is this a shameless bait-and-switch exercise, a sensible way of cultivating a professional relationship with a client, or anything else? Do let us know what you think!

3 comments:

Suleman said...

Without wishing to comment directly on Mr Fox, I've noticed that in the UK a lot of (naïve) people will assume that any patent application that was filed had input from a patent attorney, and that he/she would have ensured there was a reasonable chance that it was patentable before it was filed. That's a lot of assumptions, and I think we need to bear such things in mind when work on cases. I worked for a firm that was sensitive to the fact that when it's name was on the cover of a patent application there would be assumptions made about the quality of the drafting.

Barbara Cookson said...

Good point. However in the US a provisional is never published and has to be completed, so Mr Fox has a better business model than we might have in the UK. However the UK IPO makes it pretty easy for self-filers

Anonymous said...

Looking at Legal Zoom, the price per page does not look as cheap as I was expecting, $2300 for 5 pages and 10 claims, supposedly drafted by a patent attorney, plus official fees. Could we expect such a service to be offered in the UK I wonder and to be successful? The question is, I suppose, as patent attorneys, what is in the best interests of our clients: an all singing and dancing specification and claim set that is exceeding expensive, or a quick job done as well as we can within a limited budget, is this better than no patent application at all?