Martin Schweiger - What is a Patent Attorney and how can a Patent Attorney add value to your business

TheRoleand Valueof aPatent Attorneyin Protecting
Intellectual Property
Martin Schweiger – Patent Attorney
“One of 5,000 FICPI® Members” www.ip-lawyer-tools.com

Patent AttorneyLawyer
- No Divorce cases
- No Stolen Bicycles cases
- No Murder cases
- No Real Estate Transactions
Just innovation
Energetic, Passionate, Upright, Aspirant
The 五行 (The Five Elements) of the 馬 is火 (Fire), so
the 馬 stands for zeal and passion.
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ProtectingIntellectualProperty rightsdrives business
growth
Protecting your intellectual assetsadds
value and helps grow your business.
2020-11-15 4
A 2019study,producedjointlybytheEuropeanPatentOffice(EPO)andthe
EuropeanUnionIntellectual PropertyOffice(EUIPO), foundthatsmall-and
medium-sizedbusinesses which havefiledatleastone intellectual property
right are21%more likely toexperience high growthafterwards,compared
withsimilar firmswithoutanintellectual property(IP) rights application.
Seethe full studyhere:
EPONews
Martin Schweiger – Patent Attorney www.ip-lawyer-tools.com
bit.ly/SMECompanyGrowth

2020-11-15 A proven way tobuild value and growth 5
However, theprocessestoapplyfor,andbegranted,protectionforyour
intellectual propertyassetsarevaried, oftencomplex anddifficulttoobtain.
The applicationprocesscanbelengthy.
Withoutthe help ofaspecialist PatentAttorneyyouarelikely tofind
yourselfspendingfartoomuchof yourvaluabletime onthe application—
andyoumaynever completethe process.
Even if youdo completethe process,youmayfindthatyourhard-wonIP
rights areworthlessbecause,forinstance,theyaretoonarroworspecific.
This isyourintroductiontothe valueandroleof aPatentAttorney.

The Role of the Patent Attorney
IntellectualProperty attorneys such as patent and trademark attorneys
take youevery step of the way throughthe application process.
Inaddition, they help to identify and deliver the most value from yourIP
protection.
Also, if anyoneinfringesyourprotected IP, your Patent Attorney will help
enforce yourlegal ownership and seek compensation.
Here are some of the areas of expertise provided bya Patent Attorney:
• IP protection (patents, trademarks, copyrights, andtrade secrets)
• Draftingof patent andtrademark applications
• Preparing legal filings
• Settlement ofIP disputes
• ManagingIP assets
• Identifying IP rightsheld by others
• Licensing
• Asset transfers
• Valuations
• IP ownership issues

Client/Inventor
Client/Inventor
High Court
Patent Attorney
Lawyer/Barrister
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Patent Attorney
Patent Office
Patent Litigation
Patent Prosecution
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How the benefitsof a Patent Attorney earn the
investment
2020-11-15 8
Withthe help ofanindependentPatentAttorneyyouaremuch morelikely to:
Dosomore quickly and
efficiently
Complete the application process
Overcome objections
Ensure that granted rights are
effective in scope
Research into how the independent Patent Attorney adds value to the
process of innovation was commissioned in2013by FICPI, thetrusted
global communityfor independent Patent Attorneys.
Thatresearch, the Hoisl-Wagner Report, looked closely at the work of the
European Patent Office (EPO).

The authorsdiscovered thatapplicantsunrepresentedby aPatent
Attorneyaremuch morelikely toloserights simplybyfailing to
understandthe procedureorthataresponseis required.
TheHoisl-WagnerReportwascommissionedaspartof awider
studybyFICPI intothe valueaddedbyIP Practitionersto the
innovationprocess, whichis knownas‘ProjectOrange’afterthe
nameofthechairman,JohnOrange.
Youcandownloada brochurewithfullerdetails ofProjectOrange’s
findings here
bit.ly/IP-PractitionerDownload Report

Why IP applicationsare more successfulwith the supportof a Patent
Attorney
The 2013Hoisl-WagnerReportwhichclosely examined the
workingsofthe EuropeanPatentOffice(EPO),foundthatsmall
corporateapplicantsrelyon independentPatentAttorneysmore
frequentlythantheirlargercounterparts.
It alsofoundthatapplicationsrepresented byindependentpatent
attorneysaregrantedata muchhigher ratethanfilingswithno
professionalrepresentation.
In addition,the patentapplicationfiled byanattorneyis more
likely towithstandoppositionandchallenges fromcompetitors.

The reportalsodiscovered thatapplicationswhichhadnoprofessional
representationaremuch morelikely tobewithdrawnduring the
process.
Thesewithdrawalshappenedafterthe expensive filing feeshad
alreadybeen paid.
Manywerewithdrawnbecausethe applicantdidnotrespondto
correspondencefromtheEPO.
In fact,of50such applicantsin thestudy,only19werestill activefor
the paymentofthe firstrenewal feeatthe thirdyear.

10 waysan IntellectualProperty attorney adds value
Protecting your intellectual assetsadds value
and helps grow your business.

Here areten ways that independent Patent Attorneys createthat confidence and add expertise to the
procurement of IP rights.
1. Identifying the IP rightsthat potentially exist andcan be protected.
2. Familiarity with a wide range of technologies.
3. Ability to describe andclearly define the innovation.
4. Skillfully drafting the IP application with appropriatebreadth forthe best
protection.
5. Understanding new technology todifferentiate the innovation andextrapolate
the potential futureuse.
6. Describing the innovation in a manner that is readily understood.
7. Understanding the legal balance ofprotecting the innovation while advancing
the wider public interest of advancing economic development.
8. Balancing the basic needs ofthe IP system with obtaining the protection to
which the innovator is entitled.
9. Anticipating objections and infringements in other countries andregions.
10. Knowing how toavoid the IP rightsheld by others.

90% of entrepreneurs only ask about the initial price. That is nonsense.
Your main objective is to first find a qualified patent attorney, and only
then to agree on a price.
A patent application is both a legal document and a technical
document.
Make sure that you find an attorney who is able to fully understand
your invention at the most technical level so that he can draft a
document that fully and clearly describes it.
Look for a firm that has an attorney with the appropriate technical
background, and consider asking specifically for that attorney when
you contact the firm.
Find a Patent Attorney with Expertise in your Idea’s Technical Field

• PTO Metric: # of Office Actions
ASK: On average, how many office actions do you take to get a patent allowed
(Hint: 1 = watch out; 3+ = watch out!)
• Fluent in Your Technology
ASK: What technical degree and industry experience (if any) does the attorney
who is going to actually work on your case have?
• PTO Metric: Time to Allowance
ASK: How do their clients' times-to-allowance compare to the average published
by the PTO?
• Business Experience
ASK: What (if any) processes they specifically designed to make a patent more
commercially valuable?
• Patent Litigation Experience
ASK: about roles in patent litigation wins. Either on patent owner or on defendant
5 Savvy Questions to Ask Before You Hire A Patent
Attorney

Frequently asked questions
Some ofthemost famousinventions in historywerebasedon
stolenideas.
Forexample,the invention ofthesewing machine iscommonly
attributedtoIsaac Singerandthe Singer Corporation.
In fact,thedesign wasoriginallypatentedbyaninventor called
EliasHowe and,following legal action,Singer wasforcedtopool its
patentsandsharethe royaltieswithHowe.
Ironically,agentleman called WalterHunt had,even earlier,
invented asewing machine butdidnotpatentit.
Readarticle"10GreatBusinesIdeasThatWereActuallyStolen"
Is it true that good ideas are stolen or copied?
Download here: bit.ly/StolenInventions

Are counterfeits from China aproblem for smallbusinesses?
Chinanow has a veryeffective legal system to deal with the problem of IP
protection—but that is only effective if youapplied for IP protection inthe
first place.
Look at the story of Ruth Brons, a violin teacher in the UnitedStates, who
invented an accessory to help students hold the bow correctly.
Ruthacquired the trademark“Bow Hold Buddies” and patented her
invention inthe US, Canada, Mexico, EuropeandAustralia—but not China.
Whensheplanned a move into the Chinamarket,shediscovered two
factories already making counterfeit versions of herproduct, selling at a
fraction of herprice.
Youcan read the full story of Ruth Brons’ expensive struggle to regain
protection for herproduct inChina here.
http://bit.ly/CounterfeitsChina

What is FICPI and how can it help smallbusinesses protect their intellectualproperty?
FICPI is thetrustedglobalcommunityofindependentPatent
Attorneys,TrademarkAttorneysandLawyersthatspecializein IP, in
privatepractice.
FICPI membersknowhow tonavigatethe worldofintellectual
propertyandassistsmall businesses in IP protection,draftingof
applications,preparelegal filings, settlementof IPdisputes,
managingIP assets,licensing, assettransfers,valuationsandIP
ownershipissues.
Youcanfind atrustedIP Attorneyin yourcountryor region by
searching onthe FICPI website:
ficpi.org/member-search

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Patent AttorneyLawyer

Martin Schweiger - What is a Patent Attorney and how can a Patent Attorney add value to your business

Martin Schweiger - What is a Patent Attorney and how can a Patent Attorney add value to your business

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Martin Schweiger - What is a Patent Attorney and how can a Patent Attorney add value to your business