Patent Attorney May Have Screwed Up?

[Ryan Wolf]

First off, I'm not upset about this, as it was a terrible idea for a product in hindsight. I'm just curious to know now how to avoid a situation like this in the future, if possible.

In January 2013 I wanted to try my hand at a proprietary clothing product. I attempted my own patent search and never found anything like what I was planning to make, so I filed a provisional application. I had a few samples made and sent to me from a factory in China. I started attending a few small classes about patents that were offered at a community college. One of the biggest takeaways from that was that you get what you pay for, so don't skimp around. I asked the instructor for references for a good patent attorney and he gave me one. I did my due diligence on his recommendation and the firm he worked at and everything looked good.

I spent a few thousand on a patent search through this attorney. He found that the utility of the product I was going to make was already patented so it really wasn't worth pursuing. I didn't ask any further questions once he told me that it was already patented. That was the end of that...

However, yesterday, I did a search for the product I wanted to make to see if anyone had had success with it. Nothing showed up. Just for the hell of it, I went to Google Patents and searched for it. Well, in April of 2015, a patent had been granted for the same utility I had tried to get. Literally 95% the same as my idea. The utility is exactly the same - the only difference I could find was the artwork they proposed to be on it.

Did the attorney screw up or is it possible that he found this other patent while it was in line to be reviewed? Two years and two months just seems like a long time for a patent to be in review.

 

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[fhs8]

You wasted a time and money on that patent attorney. It costs at least half a million to enforce a patent. Big companies can do this but you can't. So unless you have at least 500k - 1.5 million to enforce infringement claims you shouldn't patent something unless the patent itself could be sold to someone else in the 5 figure range (most patents are worthless). As you know the winning side pays it's own attorneys fees in most circumstances for a civil case so even if you do win or settle if the person you sued is near broke then it's still a big loss. Then it's also not too difficult for competitors to make similar products/patents.

Even hiring an attorney to send out a C&D letter can cost a few thousand.

 

[Ryan Wolf]

You wasted a time and money on that patent attorney. It costs at least half a million to enforce a patent. Big companies can do this but you can't. So unless you have at least 500k - 1.5 million to enforce infringement claims you shouldn't patent something unless the patent itself could be sold to someone else in the 5 figure range (most patents are worthless). As you know the winning side pays it's own attorneys fees in most circumstances for a civil case so even if you do win or settle if the person you sued is near broke then it's still a big loss. Then it's also not too difficult for competitors to make similar products/patents.

Even hiring an attorney to send out a C&D letter can cost a few thousand.

I'm glad I never went for it. I'm just curious if the attorney could have screwed up and told me wrong or if he actually found something, and if that was the case, how this identical one was granted.

 

[Walter Hay]

Patents and other protection of IP are almost worthless in China. If you have a product made locally and hit the market hard you might have a window of opportunity lasting from a few months to a year two.

If you send details of your new product to a supplier in China there is a risk that it will be on the market before you even see a prototype. It's simply not worth the effort.

IP protection such as patents, registration of trademarks, registered designs etc., will be of some benefit in Western countries, but as fhs8 pointed out, enforcement is only for the rich. Many western resellers will cease and desist on receiving your complaint, but if the copy of your product is being made in China it will be sold by countless unscrupulous vendors in western countries, who are foolishly willing to take the substantial risk.

I would never ask a manufacturer in China to produce a new product invented by me.

Walter

 

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[Ryan Wolf]

Patents and other protection of IP are almost worthless in China. If you have a product made locally and hit the market hard you might have a window of opportunity lasting from a few months to a year two.

If you send details of your new product to a supplier in China there is a risk that it will be on the market before you even see a prototype. It's simply not worth the effort.

IP protection such as patents, registration of trademarks, registered designs etc., will be of some benefit in Western countries, but as fhs8 pointed out, enforcement is only for the rich. Many western resellers will cease and desist on receiving your complaint, but if the copy of your product is being made in China it will be sold by countless unscrupulous vendors in western countries, who are foolishly willing to take the substantial risk.

I would never ask a manufacturer in China to produce a new product invented by me.

Walter

One of my dad's roommates from college owns a factory in China, so he was the one who did the prototypes, in his factory (I believe).

The name listed on the patent is just a guy. Sure, he could be part of a big company or it could be an alias (if that's legal...?), but I don't care enough to investigate.

I was super naive during this time, so yes, I would do many things very differently if I ever try to patent something again. I've seen a lot of people get ripped off really quickly, though. Even if I had an idea, I wouldn't be particularly motivated in going the IP route at this time.

 

[OldFaithful]

@Ryan Wolf Yes, it's certainly possible that your attorney found the patent in it's provisional status. I'm betting that when you searched, that you used the website. If I understand correctly, the USPTO website doesn't list applications that have been started but not yet completed. To find patents that are in process, you need to contact the USPTO directly. And yes, it can take 2 years or more to complete the patent process. It's common for the patent owner to stretch out the application & approval process as long as possible to lengthen the period of time that they can protect their product.

 

[Ryan Wolf]

@Ryan Wolf Yes, it's certainly possible that your attorney found the patent in it's provisional status. I'm betting that when you searched, that you used the website. If I understand correctly, the USPTO website doesn't list applications that have been started but not yet completed. To find patents that are in process, you need to contact the USPTO directly. And yes, it can take 2 years or more to complete the patent process. It's common for the patent owner to stretch out the application & approval process as long as possible to lengthen the period of time that they can protect their product.

Interesting. I knew the process took a while but I didn't think it could take over two years. Now I know! Thank you for this.

 

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[AvocadoMan]

Patents and other protection of IP are almost worthless in China. If you have a product made locally and hit the market hard you might have a window of opportunity lasting from a few months to a year two.

If you send details of your new product to a supplier in China there is a risk that it will be on the market before you even see a prototype. It's simply not worth the effort.

IP protection such as patents, registration of trademarks, registered designs etc., will be of some benefit in Western countries, but as fhs8 pointed out, enforcement is only for the rich. Many western resellers will cease and desist on receiving your complaint, but if the copy of your product is being made in China it will be sold by countless unscrupulous vendors in western countries, who are foolishly willing to take the substantial risk.

I would never ask a manufacturer in China to produce a new product invented by me.

Walter

I narrowly avoided making this mistake...