LET’S HEAR FROM AN EXPERT: LESLEY WALLERSTEIN, PATENT, TRADEMARK, AND COPYRIGHT ATTORNEY

By: Hélène

If someone has an idea for a new product or service, why should they hire legal help?

Shark Tank has made invention cool and sexy, but there is a whole other side of building a business around an idea that can be, in all fairness, dry and tedious. There are laws concerning safety, taxes, and intellectual property that come into play and that do affect a business’ bottom line. It is so important to know what these are going in, so that you can plan ahead and avoid unnecessary expenses and surprises. An experienced business attorney consulted early in the process knows the typical bumps in the road and can prepare you for what you are getting into. Get your road map in place first, then kick back and enjoy the ride.

What are the risks of not patenting an idea or trademarking a service?

It depends entirely on the product or the service. Not everyone needs a patent or a trademark, but a qualified attorney can help determine this. Patents protect not so much abstract ideas as much as tangible products and methods of making them (such as computers, pharmaceuticals, or cars). In a practical sense, patents give a person the right to prevent others from making, using, or selling their invention. Trademarks are similar, but protect a brand name and reputation (such as Coca-Cola, Adidas, or Apple computers).

These intellectual property rights are worth money. Patents and trademarks can be bought, sold, and licensed like any other property. As such, they give the owner the right to take to court anyone copying their idea or misusing their brand. If an idea or brand takes off and the owner has no protection, he risks others copying him and consequently losing his position in the marketplace. There are important financial consequences to be considered and an attorney can help decide whether it is worth the time and money to invest in patent and/or trademark protection.

What are the steps to patent an idea or trademark a service? How long does it typically take?

Actually, the overall steps are similar for both patents and trademarks. Many attorneys offer a preliminary patent or trademark search. Both patent and trademark searches can provide two very important pieces of information: the likelihood of receiving a patent or trademark and also the risk of infringing on other, existing, patent or trademark owners.

With the Internet it is possible to do a baseline search on one’s own, and many clients begin there. To supplement that, I typically recommend an independent and professional search because those examine databases not available to the general public. Spending the money in a quality search up front saves the client money that would be spent later re-manufacturing, re-designing, and re-branding a product or name that already exists or, in a worst case scenario, defending against accusations of infringement.

A patent or trademark attorney can then interpret the search and advise the best course of action. A quality search and attorney’s opinion can take about two weeks—sometimes more, sometimes less.

Most trademark applications can be completed in about an hour. Patent applications typically require more time; how much time depends greatly on the technology and the type of patent. Both can be filed electronically and both get examined by a professional, either another trademark attorney or a highly specialized patent examiner. Trademarks typically take nine months to issue. Sometimes it takes longer, sometimes shorter. Patents take more time, anywhere from a year to two and a half years or more.

Can one go through this process alone? What is the value of hiring a patent and trademark attorney?

Yes. It is entirely possible to file patent and trademark applications without an attorney. However, for both patents and trademarks, there is much more than just filling out forms and paying fees. I cannot emphasize this enough. This is where having done a pre-filing search really pays off. Based on the initial search, an experienced patent or trademark attorney will know strategically which application to submit, what to include in the application, when to submit it, and what to say. He or she will be able to monitor important deadlines and fees, and to understand how to respond to the patent or trademark examiner when something goes wrong. Many times it does.

What can one expect to pay for such an attorney? Why is it worth it in the long run?

Fees vary greatly with the attorney’s location, experience, and qualifications. As a general rule, you will pay more for an attorney in a large city and more for an experienced attorney. You will typically pay more for patent attorneys in particular because of the technology degree and extra license they must have in order to call themselves patent attorneys. Patent agents, who have similar qualifications except are not attorneys, can also help prosecute patent applications for somewhat less than patent attorneys. You can search for licensed patent attorneys and agents at the U.S. Patent & Trademark Office website.

Many, though not all, patent and trademark attorneys offer free or low-cost initial consultations for general information. However, if you want specific legal advice about a particular case, you should expect to pay the attorney’s customary hourly fee. Typical hourly fees for patent and trademark attorneys in the north suburbs of Chicago, for example, start at $275 and go up from there. Some attorneys offer fixed fee arrangements and payment plans to make their services more affordable. Most important is to find an attorney you like and trust.

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