The Relationship Between Patent Attorneys and Inventors And How Things Have Not Changed in Over 100 Years

by Steve Reiss (stevenreiss@scienbizippc.com)

Left: Google Books Electronic Version/ Right: Facsimile of Original Title Page

In the over 100 years since this book was put to print, very little has changed from the issues mentioned by the author, except for the inflation of the fees mentioned.  In actuality, little has changed in the 182 years since freshman Senator John Ruggles' scathing assessment of the US patent system and the need for the Patent Act of 1836, the basis for today's US patent system.

Whether we are talking about: inventors representing themselves, inventors mistrust of patent attorneys, unethical and disbarred patent attorneys and brokers, how patent attorneys and inventors should work together, whether to select a local or Washington, D.C. based patent attorney, worthless patents, none of these have gone away.

It's not that Edelman was able to see the future; it was that hardly anything has changed, despite all the years in which things could have changed and despite several revisions of the US patent laws and regulations.

From Philip E. Edelman, Inventions and Patents (available for free download) pp. 18-24 (1915):

Facsimile of Original Introduction to Chapter III

 CHAPTER III - PATENT ATTORNEYS

The Need of an Attorney. 

As was pointed out in the preface, it is not the intention of this book to make the inventor his own attorney. There is a saying which attorneys like to quote at times which runs something like this,

"He who tries to be his own lawyer has a fool for counsel." It might be better to say that one unfamiliar with patent procedure who tries to be his own lawyer has an unwise man for counsel. No one can refute the fact that an inventor who is also familiar with patent procedure and skillful in presenting an application has a distinct advantage over other inventors who must depend entirely upon an attorney, and that he may present his own case better in many cases than an attorney.

Of course the chief object of an inventor should be to invent and he is likely to be too busy inventing to take the time and trouble to present his own case. However, a knowledge of patent matters cannot help being an aid to a successful inventor.

In the first place, an inventor who understands patent matters can present his case to an attorney much better than one who does not. He is better able to point out the novelty and merits of his case, and to suggest strong claims in many cases. Then too, he is able to understand the references "dug-up" in a preliminary search, to realize the strength or weaknesses in the claims which he is allowed, to decide whether a claim will be of value, to take the proper precautions to establish priority, and many other items.

To be sure, there is the case of the so-called poor-inventor. To him it seems that lack of funds will force him to present his own case. Of course, there is the alternative of assigning the whole or a large part of the invention to some financial supporter, but there are many who are reluctant to do so. The path of the poor inventor is indeed a hard one. Even if the difficulties are surmounted and the patent is obtained, the difficulties generally begin all over again when he attempts to sell or market the invention. Of course, this is not intended to discourage any inventor and even then it is doubtful if he could be discouraged.

It is not difficult to trace the progress of an application which is presented by an inexperienced person.

The mistakes in matters of form, the delays, the prolixity in the claims, the inability to appreciate the significance of certain references and non-application of others, the inability to tell the necessary and omit the unnecessary portions, all these and others are common occurrences and causes of failure. Of course, a simple case is less likely to fail than a complex one. Imagine how an inventor would get along in a divisional case, or in interference proceedings without counsel!

From the foregoing some readers might be led to conclude that the attorneys had somehow influenced the paragraphs in their favor. The viewpoint is unprejudiced and merely shows the task which is taken when an unskilled person attempts to present his own case. Of course it does not follow that he must fail in the attempt.

He may even make a big success. In the rules of practice the Patent Office itself recommends that an attorney be employed, and goes on to say, "as the value of patents depends largely upon the skillful preparation of the specification and claims."

How true this last statement is! Under the present method, of Patent Procedure, the value of a patent does not depend upon the merits or novelty of an invention as much as it does upon the skillful preparation of the specification and claims and the prosecution of the application. This may appear unfair but it is nevertheless true. The reason will appear later when the construction of the specification and claims is discussed.

Selecting an Attorney. 

It is of importance to the inventor that he should have a competent attorney to present his case. In view of the foregoing paragraphs and remembering that there are some sixty thousand applications more or less filed each year it is little wonder that these patent attorneys should form a numerous and apparently prosperous class in themselves.

How, then, is an inventor to select an attorney?

Should he select a local or a Washington attorney?

These and other questions must be answered by the individual. The Patent Office does not, of course, recommend any particular attorneys. A register of attorneys, however, is published and may be obtained from the Superintendent of Documents for twenty cents. In this register the names of all persons who are entitled to represent applicants are kept. It is not necessary that a person be an attorney-at-law in order to be registered. It may be remarked that while this register is intended to be a guide to inventors, it is an open secret among attorneys that there are a few names on the record which ought not to be there. This is an unfortunate circumstance and should be remedied. While it is not the intention of these paragraphs to " knock," it is felt that the reader should be warned against certain " Bargain-advertising Concerns," who make alluring offers. Indeed some of these concerns have advertisements and literature which are especially alluring. "Patent obtained or your money returned, bargain rates, vague assurances, etc.," are the more common offers that are made. While these concerns undoubtedly obtain a number of valuable patents, the methods which are often employed are unprofessional to say the least. Who can commend concerns which offer so much a head for names of inventors who become their clients? Certain concerns advertise that they make "Free Searches," and offer guarantees of patentability. There is no doubt that some inventors are benefited by such an arrangement, but there are a goodly number, on the other hand, who are misled into spending considerable time and money. An inventor who writes to one of those concerns is quite likely to receive some such reply as this:

 "We find that there are several patents similar to yours but since many of our clients are often able to make certain changes and thus obtain a patent we will forward copies of these patents to you upon the receipt of $. You are of course aware that up to the present time we have acted for you without compensation."

There seems to be a tendency on the part of some inventors to distrust patent attorneys, as a result of the few who have caused the trouble. Indeed it appears that at times the situation has been almost as serious as the cases of the pension attorneys some years ago. The author recalls the time when the names of certain attorneys were carried in the Gazette as a warning against their unreliability.

Attorneys who were disbarred from practice before the Patent Office under one name often resumed practice under an other name and so on. At the present time it is not definitely known that any serious fraud exists in respect, though certain cases are certainly open to suspicion.

In justice to the great number of reliable attorneys it may be said that they work honestly and conscientiously for their clients and do everything possible to protect the interests of the inventors whom they represent. Of course, there is the other extreme, namely, those few attorneys who charge what seems to be almost extortionate fees, but in this respect, every man has a right to set his own value upon his services.

The government takes considerable care to protect the inventors from incompetent attorneys, but of course some continue to nourish in spite of all. As an example of this an amendment to paragraph 22 of the rules of practice is quoted below:

(d) The Secretary of the Interior may, after notice and opportunity for a hearing, suspend or exclude from further practice before the Patent Office any person, firm, corporation, or association shown to be incompetent, disreputable, or who refuses to comply with the rules and regulations thereof, or who shall, with intent to defraud, in any manner deceive, mislead, or threaten any claimant or prospective claimant, by word, circular, letter, or by advertisement, or by guaranteeing therein the successful prosecution of any application for patent or the procurement of any patent, or which word, circular, letter, or advertisement shall contain therein any false promise or misleading representation."

Relation of the Attorney to the Inventor.

The inventor or the assignee of the whole interest upon conveying the power of attorney to an attorney practically gives the whole care of the case to him. The attorney then conducts all of the correspondence with the Patent Office generally to the exclusion of the inventor and information concerning the progress of the case must come to the inventor second hand.

There is, then, every need for trust and confidence in the attorney. When the attorney can be interviewed personally this is much easier than when correspondence alone must be relied upon. Of course, the inventor may revoke the powers of attorney at any time if need be.

He is thus doubly protected.

Whenever possible, it is generally advisable to employ the services of an attorney who is particularly skilled in caring for cases of the particular class to which the invention may belong. In fact, attorneys who also have mechanical ability are the better fitted to care for many cases.

The Value of the Attorney. 

In general the need of an attorney has already been pointed out. It is a well known fact that there are some attorneys who are not of high efficiency in caring for their clients' applications, not because of any dishonesty, but because of the general inability to give the case proper care and treatment. In fact, some of the cases which reach the abandonment stage in the hands of certain attorneys are good proof of the foregoing statement.

Generally speaking, a case should be completed within a short time, but of course the indiscriminate canceling of claims and similar methods are not commendable.

Certain attorneys make a practice of so-called "rushwork" and care for a great number of cases in a given time by this method. The crowding of work cannot but result in some careless work, although the experience of the attorney may be such that both rapidity and accuracy are possible.

As has been pointed out, the government takes considerable precaution to protect the inventor from disreputable persons. It does not, however, require any bond from attorneys at the present time and since the chances of prosecution are somewhat remote there are still some attorneys of this class who continue to nourish.

It is hoped that the standard of all Patent Attorneys will soon be put upon the plane of the higher class and above reproach or suspicion.

The Duty of the Attorney.

In accepting a case the attorney takes considerable responsibility and it is his duty to attend to it in confidence and trust. The inventor should be fully informed of the probable commercial value of the invention, of the present state of the art and the significance of prior patents in the same class, and the probability of obtaining a patent of real worth. When this is done, the waste of money and time in obtaining patents of little or no use will be minimized.

It is a well-known fact that a considerable number of worthless patents are instigated and encouraged by certain attorneys who have no further interest than the resulting fees. The inventor is often made to believe that his invention will be of impossible value and is blinded to the commercial aspect of his invention.

It often happens that the inventor is led into believing that the patent which is obtained is a sure protection for his entire machine, when in reality it merely covers some nonessential details. In this connection the concerns who advertise that they obtain patents or return fees are particularly active. To attorneys it is comparatively easy to obtain a claim or two on some detail feature of an invention, even if it is otherwise anticipated by references of record. In fact, in many cases the inventor is advised to make minor changes in order to facilitate the obtainance [sic] of such patents. It is through these and similar methods that the patent office is padded with superfluous patents. The only profits which accrue in such cases are those which the attorney obtains as fees.

The confidence and trust in an attorney is of the utmost importance and should be fully reciprocated. No one should confide in any of the scheme attorneys. It is sometimes difficult to distinguish between reliable and unreliable attorneys. Some of those who make great promises show long lists of printed references, make the greatest offers of free services, warn the inventor against fraudulent concerns, make apparently ironclad contracts, and resort to similar plans, are the ones who are to be avoided. They can generally be discovered by evidences of bad faith, such as direct contradictions in their literature and circulars, condemnation of the very practices which they themselves employ, misleading statements, and other earmarks.

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