During my first year in law school, my Civ Pro prof said, "In hospitals, doctors work together and use their best skills to help each other and help patients. But in court rooms, lawyers tear each other apart and use their best skills to knock each other off of their bikes."
Unfortunately, I found this somewhat true today. I was on the phone with another attorney to negotiate and come to an agreement for a trademark usage. A little background: I sent her client a cease and desist letter a few weeks ago and she responded to my cease and desist letter with her cease and desist letter. I responded to her cease and desist letter with a coexistence agreement. Anyways, I called her because I knew she received my response on Monday, but she hadn't called me back.
Majority of my work consists of preparing a utility patent. Every now and then, I get to work on a design patent, but then again, it's not that often.
If you don't know already, utility patents give patent owners the right to prevent others from making, using, or selling the invention. Utility patents are granted to inventions that provide new and useful results. Design patents, on the other hand, protect an ornamental feature of a functional invention, and the ornamental feature only. This means design patents don't protect the functionality of the item.
When seeking a patent protection, should you file a design patent AND a utility patent? Most likely, the answer is no.
I generally write about 3 to 5 provisional patent applications per week. It used to be a lot more than that, but I've been writing more nonprovisional patent applications lately. (By the end of this year, I would have written over a 100!!) I wouldn't say writing provisional applications is my favorite thing to do, and there are certainly more interesting things to work on. But there are definitely reasons why provisional patent applications exist, and why most inventors file one.
Recently, someone I know has been asking whether provisional patent applications are necessary. Not a lot of people like writing it, so should we skip it all together and go straight to working on nonprovisionals?
As a patent attorney, I love getting a patent registered. After a long patent prosecution process, convincing a patent examiner to allow all of the claims in a patent application brings me great joy and happiness. It sounds silly, but it's true. Finally, I get to call the inventor and tell him or her the good news. In fact, one of the highlights of this year was getting this thing patented. I remember the client was upset about the amount of time and money she spent. But all of our efforts were validated when I somehow miraculously convinced the examiner to allow all of the claims. Trust me, I didn't think this was going to happen.
But the life of a patent attorney is not all sunshine and rainbows. Sometimes, I receive a really good Office Action. Sometimes, the patent application doesn't have the information I need. This is when I hit a dead wall, and there is not much I can do. So yes. There are times when I advise my clients not to pursue their patent applications.
Last week, I was telling you guys that I was looking into FlexTrac for my new docketing system. I wanted to tell you guys how the demo went.
Here are some pros and cons.
- Online demo was convenient. This was a plus because I was actually out of my office on the day of the demo.
- Pretty intuitive. Someone said that it's not easy to navigate, but think anyone who is computer literate would be able to use it.
- Great customer service. Everyone I talked to was very friendly.
- Free trial. I got a month to try it. Just need to download it onto my computer.
- Able to docket patent, trademark, and general matters.
- Pretty flexible. By that I mean, very flexible. You can basically set up any and as many reminders as you'd like.
- Able to store form emails and USPTO forms.
- Not a cloud based system (at least the one that I looked at for law firms).
- Doesn't talk to USPTO... but I think most systems don't talk to USPTO. Some systems for trademark docketing talk to TSDR though, but patent docketing systems generally don't. Do you know of one that does? I'd love one.
- Doesn't automatically send emails to client on designated dates.
- Almost too many different ways to customize it. Training will be tough.
- 90s theme. I wish this looked more modern... and simple.
Overall, I would give FlexTrac 3 out of 5 stars. I'm definitely still shopping and would like to see another demo. Perhaps a cloud based system?
At least once a week, a client asks me, "What else do you think I need to add to my invention to get my invention patented?" This is a hard question to answer. This is particularly true if the invention is related to a field I'm not completely familiar with (e.g., pharmaceuticals, very complex computer software, etc.). But even if I were an expert in a field, I'm still very careful about what I suggest.
This isn't because I don't want to help these clients. It's because I don't think it's in my client's interest to name me as one of the co-inventors. Although it may seem counter intuitive, an inventor is anyone who helps conceive an idea, even if that person isn't the one to ultimately make a prototype or perfect the invention. So if I were to suggest something that ultimately contributed to an invention, then technically I'd become one of the inventors, and as a co-inventor, I'd share the ownership of a patent with my client.
A docketing software is probably one of the most important things that you can have at a law firm. This is particularly true if you have hundreds of clients on your docket.
It is definitely not a pleasant feeling when you're sitting at your desk, and you just happen to glance over at your calendar and all of a sudden you get this chill down your spine, and realize you might have forgotten to do something for a client that day. Thankfully, I've never missed a deadline, but I've heard some horror stories.
I went to a CLE class tonight and learned a few things about Patent Trial and Appeal Board (PTAB) procedures, mostly about inter partes review (IPR).
IPR is a trial proceeding conducted at the PTAB to review the patentability of one or more claims in a registered patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.
IPR is initiated by a petitioner (not a patent owner) either 9 months after grant/issue of patent or after post grant review, whichever is later. The petitioner has the burden of showing whether he or she has a reasonable likelihood of prevailing with respect to at least one claim challenged. IPR lasts for about a year.
I wanted to write about this yesterday, but I was catching up with a friend of mine from law school, so I did not get the chance.
I have a very important client I've been doing some trademark work for. He is also a dear friend whom I met through my husband. He had a trademark application that he filed in Europe, and I helped him apply for the same trademark in the US. Though I won't disclose the specifics here, I can say that this application was nothing like an application I've worked on before.
I recently filed like 20 trademark applications and all of them claimed pending Mexican trademark applications for priority.
As you can see, I speak a little Spanish, but not enough. So I asked my friend Google translate to help me out. Did you know though, that Google translate can give you different translations on different days? I found out when I got a "lid" one day and a "cover" the next.
This isn't a huge difference, but I thought this was pretty interesting. It's also good to know so I can be consistent in my applications and usage.