Some patent attorneys see themselves as specialists.
Others as generalists. I had a friend who worked for me once, who liked
telecommunications patents and would occasionally do computer architecture, but he used the analogy of a cardiologist to describe his attitude. He wouldn't touch minor complaints, the coughs and wheezes, constipation or other symptoms that fill the day of the
general practitioner.
I am definitely a GP – a general practitioner. I get
easily bored and suspect that working in-house in industry would drive me mad.
It is the variety of my practice that keeps me happy. I suspect that many sole
practitioners cannot afford to be specialists. To put it another way, one can't just be a sole
practitioner. One has to do 'eels as well.
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| 'Soles and eels, of course,' the Gryphon replied rather impatiently: 'any shrimp could have told you that.'" |
It's not all cobbling of course. Sometimes new clients have a problem unburdening
themselves of their ideas. The wariness of disclosing their invention seems
inversely proportional to the size of the client, and, sadly, also inversely
proportional to the worth of the idea. Private inventors often have a problem understanding the
concept of attorney-client privilege. I explain that like a priest, imam or rabbi, anything they tell me remains in confidence -- but they still have to open up to me, just as if they were on a trip to the dentist.
So what do they need a patent attorney for anyway? Why
not write the thing up themselves?
I explain that, when we built the upstairs of our house,
I wanted a wardrobe to be dismantled from where it was positioned downstairs
and reconstructed upstairs. The problem was that the wardrobe was 242 cm
whereas the clearance to the ceiling was a mere 240 cm. Now, being an
engineer and physicist, I knew that I wanted to take the 2 cm off from the
plinth at the bottom, rather than removing the top of the cupboard. The problem
is that this was not really a job for a handsaw. One needs a saw-table. I phoned a
carpenter neighbour who came, collected the wardrobe, shortened the sides from
the base, and assembled the wardrobe in place. Now the difference between that
wardrobe and the others which I assemble myself is that, in this case, the doors
line up properly. Of course, I know in theory exactly how to adjust the doors: the hinges
have two screws and one can adjust using these. The carpenter
who makes and assembles kitchen cupboards and wardrobes for a living can however do the
job in practice.
Another analogy I like to use, is that of the tailor. Essentially, I can cut clients a suit to fit their
invention like a glove. The more material they give me, the more room there
will be to grow. A waistcoat would be nice. Whether the suit will be for a
child or for an adult depends on the amount of material they provide. In the case of patents, however, it's
not just a question of the amount of material, but also the quality. If they want the suit as provisional protection, that's
one thing. If it is supposed to last up to twenty years, a good quality
fabric is advisable too.
Composed by Michael Factor and posted for him by Jeremy
I agree that specialising as a solo practitioner is not a viable option, but then I believe that it is not a sensible option for any patent attorney. Despite those suggesting we seek appointments as technically qualified judges at the new Unified Patent Court in Europe a patent attorney is there to guide an inventor through the legal aspects of the patent process, to act as an advocate, but not to invent or implement the technology. Therefore we need to specialise in our knowledge of law and procedure and be capable of understanding our clients but we are not competing with them.
ReplyDeleteI suppose that an inventor would make the assumption that they know most about the invention, and how it should be described. They know the problem they were solving, the thought processes they went through, the clever bits and the not so clever bits. However as patent attorneys we know that the problem solved, the contribution and what is clever about the invention can all change as prior art is found. Until such subtleties are realised by inventors they won't realise what we really do.
ReplyDeleteAn inventor who knows his own clever bits is a very handy client indeed. Often the question is "is this patentable" and interrogation is necessary to extract the clever bits. Many a patent specification flounders whether written by inventor or agent because that essential prelimianry analysis of what the inventive contribution is has not been done. As you rightly point out, it cannot be achieved without some knowledge of the prior art and if the inventor was working in a vacuum, then its probable he may have re-invented rather than invented. Searching is therefore an essential professional step too. Thankfully the resources made available on Espacenet and Google Patent make that a task inventors can reasonably undertake.
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