Smith & Hopen provides the highest level of patent services including patentability searches, clearance searches, patent prosecution, administrative and court-litigation and patent appeals to the Federal Circuit.

Consider the statistics. Business leaders such as Motorola, IBM, Harris Corporation, and United Technologies Corporation are awarded hundreds of patents each year for innovations created by their Florida-based employees or inventors. Regardless of size, successful companies understand the value of United States patent protection. Developing a patent portfolio offers a number of strategic business advantages including a 20-year legal monopoly.  

Competitive Advantage

Companies with a strong patent portfolio establish effective, lawful barriers to competition. Many companies fail to realize the true value of their innovations until those same innovations are adopted by the competition. Securing a patent will provide you with legal recourse to enjoin and recover damages from competitors who manufacture, use, sell or import your company’s innovations.

Enhance Revenues

Patent rights are a valuable business asset. Licensing agreements with third parties, or even competitors may result in significant royalties paid to your company for the use of its technology. Licenses may be granted specifically for certain periods of time or for only certain geographical locations. Patent rights may be sold outright or even donated to an educational institution, such as a local university, for tax purposes. A patent portfolio may increase the overall value of a company seeking to be sold or merged into another company.

Marketing Value

The “patent pending” or granted patent designation is an effective marketing tool. How do customers choose your product or services over your competition? How do you communicate to your customers that your products or services are superior to your competitor’s? Your patent portfolio inspires confidence in your customer’s purchasing decision. Your company becomes a nationally recognized contributor to the advancement of your field. The grant of a patent is often newsworthy and may be utilized to bring positive public attention to your company.

Background Information

The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads “Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited  times to authors and inventors the exclusive right to their respective writings and discoveries.” Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The law now in effect is a general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code.

The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the Patent and Trademark Office to administer the law relating to the granting of patents, and contains various other provisions relating to patents.

A patent for an invention is a grant of a property right by the Government to the inventor (or his or her heirs or assigns), acting through the Patent and Trademark Office. The term of the patent shall be 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application under 35 U.S.C. 120, 121 or 365(c), from the date the earliest such application was filed, subject to the payment of maintenance fees. The right conferred by the patent grant extends only throughout the United States and its territories and possessions. However, during this term, a patent gives an exclusive monopoly to the patent owner to practice the claimed invention. A patent typically takes anywhere from 6 months (for accelerated applications) to 2-3 years from filling to allowance.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained. In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles which are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything which is made by man and the processes for making the products.

The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons.

The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

Interpretations of the statute by the courts have defined the limits of the field of subject matter which can be patented, thus it has been held that the laws of nature, physical phenomena and abstract ideas are not patentable subject matter.

A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

Attorney-Client Relationship

Make sure you ask these 10 questions before hiring a patent attorney to protect your intellectual property. Selecting a firm to handle your intellectual property may be the make-or-break decision in your business endeavor.  Don’t go about it causally.  Ask serious, pertinent questions about the qualifications, experience and reputation of the firm you are going to use.

  1. Exclusively patent and trademark? Is your practice exclusively focused on Intellectual Property? YES. We limit our practice exclusively to Intellectual Property…nothing else. Every single practitioner is registered with the U.S. Patent & Trademark Office.
  2. AV-rating? Is the Firm AV-Rated with Martindale-Hubble? YES. This is the highest possible rating. According to Marindale-Hubble, “AV Preeminent is a significant rating accomplishment- a testament to the fact that a lawyer’s peers rank him or her at the highest level of professional excellence.”
  3. Extranet access? Do you provide extranet access? YES. Clients have 256 bit encrypted access to all matters. 24/7 access to billing, deadlines and case progress. We maintain full transparency to clients. To our knowledge, we are the only intellectual property firm that offers this level of convenience to clients.
  4. Representative clients? Do you represent both small and large business entities? YES – Some of our clients include USF, UCF, University of Colorado, FAMU, Florida Poly, UNF, Moffitt Cancer Center. Our firm is subject to an extensive vetting process when large clients evaluate our credentials. We also represent a large number small businesses making innovations in their own area of expertise.
  5. Patents and trademarks found valid in litigation? Do your patents and trademarks survive litigation challenges? Our goal is to draft patent and trademark applications in an effort to avoid subsequent challenges and litigation. While no attorney can ethically guarantee an outcome, our attorneys strive to anticipate challenges to validity and develop strategies to prevent invalidation.
  6. Technical expertise for patents? Do you have technical depth to understand the technology? YES – All Disciplines. Mechanical; Electrical; Software; Chemical; Life Science. Our group of patent practitioners constitutes one of the largest pure-IP practices in the South East United States. See our practice summary publication for specific technology backgrounds.
  7. Considered experts in intellectual property? Are you considered experts in Intellectual Property? YES – most partners are Board Certified in Intellectual Property by the Florida Bar (2 of only 140 nationally). This is the highest level of acknowledged proficiency in patent, trademark and copyright practice.
  8. Teaching experience in intellectual property? Do you have teaching experience? YES – University of Florida College of Law; University of South Florida; Florida Bar; U.S. Dept. of Defense; Moffitt Cancer Center; Florida A&M; Florida State U.; Tampa Bay Technology Forum; U. of Central Florida.
  9. International Patent Filings? Do you practice internationally? YES – foreign law firms select our practice for U.S. entry for patent applications originating in Europe, Japan, China and other countries. Our economy is truly a global one and knowledge of foreign rights, importation and competition is essential.
  10. Value in our patent and trademark practice. Do you provide the highest value? We are a national firm, but because our principal office is located in southwest Florida, we enjoy reasonable fixed and variable overhead business expenses.

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Patent cases on contingency introduce some complexities not found in other areas of the law. We are occasionally asked to write a letter, file a patent application, or handle a lawsuit on a contingent fee basis. Our policy is to decline such requests because contingency fee arrangements are usually unfair to the client.

Suppose a client asks us to write a demand letter for $100,000 on a contingency fee basis, telling us to keep a third of the proceeds if the letter results in payment. We could receive a legal fee of $33,333.33 for a letter that would normally cost about $600.00. It makes much more sense for the client to pay the small letter-drafting fee and keep the proceeds.

Signing a document

The same logic applies to the filing of a patent application. To avoid a $10,000.00 legal fee for preparation of a mechanical patent application, for example, a client may propose that we waive the fee and participate in the profits derived from the invention. If the invention meets with commercial success, the client could pay a fee far in excess of $10,000.00.

If the invention is not commercially successful, we have worked for two to three weeks with no revenue, even though our overhead bills never stop coming in. We have no control over whether or not an invention meets with commercial success, because that depends upon the marketing efforts made by the inventor, not upon the quality of the patent application. Consumers don’t purchase products because the patent application for the product is well-written. Being full-time patent attorneys, we can do no more than advise our clients to avoid marketing scams.

A different reasoning applies to lawsuits. Contingency fee arrangements are common in personal injury (PI) cases because the only issue in such cases is damages. The liability is usually clear and most PI law firms will not accept a case on a contingent fee basis if liability is not clear. Thus, the only issue in most PI cases is how large the payment will be, not whether or not there will be a payment. In intellectual property cases, liability is always disputed. An accused infringer will attack the validity of the patent by citing prior art that was not cited by the examiner, and will argue noninfringement as a backup defense. A typical patent infringement suit lasts two or three years and requires the full-time attention of at least one lawyer. No lawyer with an office can stay in business without revenue for such a long period of time. Personal injury cases, on the other hand, are over much quicker and, again, the only issue is the size of the recovery.

In most cases, we are able to quote a flat fee for our services. This removes the uncertainty caused by hourly rates. When a lawyer quotes a fee of $300 to $500 per hour to write a letter or to prepare a patent application, the inventor’s reply is always “Write fast.” Well, that leads to a letter or patent application prepared in a bum’s rush. A well-crafted letter, patent application, or an amendment to a patent application, is best prepared in a relaxed, well thought out manner. A flat fee protects the client from surprises, ensures a thorough preparation of the application, and is, we believe, the only fair alternative to hourly rates and contingency fees.

Tag: fees

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No attorney should ever send a bill they would not pay themselves. One benefit of hiring an experienced, specialized firm is that we’ve already seen almost every intellectual property scenario. Clients do not get billed for us to learn even moderately complicated issues of patent, trademark or copyright law.

With thousands of patent and trademark prosecutions under our belt, we handle matters efficiently knowing the path to take to achieve the best possible result. The same applies to more complicated proceedings such as Inter Partes Review and Trademark Trial and Appeal Board proceedings. Where we can estimate a flat fee, we provide a written estimate ahead of doing the work. Where the matter is contested, such as a litigation, we bill down to the second with detailed logs of the work we perform to advance the client’s objective. There is no “rounding” up to the next thirty minutes or hour.

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Booking a consultation does not automatically create an attorney-client relationship. However, no successful patent attorney will “steal” your invention. In fact, the reality is that inventing is hard work. It takes not just the spark of imagination, but project planning, marketing, capital investment and competition with the status quo. The attorney-client privilege in our profession is exceptionally strong: we are bound by confidentiality by both the state bar and the U.S. Patent & Trademark Office Rules of Professional Conduct. The attorney-client privilege is the client’s right and is fiercely protected by ethical attorneys.

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When you book a consultation, you might think you will have a long agreement to sign before we get started. We are often asked by clients for a “letter of engagement” prior to discussing an invention, a new branding campaign or other activity. We don’t provide such letters. Why? Simple: we find them a clear conflict of interest.

As attorneys, we can inject terms and conditions into such agreements that dramatically favor the law firm over the client. However, what about our duty to represent our clients’ best interests? These letters of engagements proffered by bar associations and legal practice advisors immediately set the attorney and client in an adversarial relationship. A well-informed client would not sign such agreement without legal review. So, would the client have to hire Firm B to review an engagement letter for Firm A? Would Firm B also have a letter of engagement to sign prior to the review? The result is nonsensical.

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