How do you use the word “Esquire”?

~ Random guy

In the United Statues, Esquire is a honorific that is used to refer to an attorney. So, when writing to an lawyer, you may use the title Esquire or the abbreviation Esq. after the lawyers full name. It is a way to be polite, similar to using the title Honorable before the name of a judge or an elected official.

It is OK to use Esquire with both male and female attorneys. Since it is a title, you do not want to use it with another title. For example, Mr. John Q Smith, Esquire would be incorrect because it uses both Mr.* and Esquire. Likewise, if you use Esquire or Esq., you should not use further letter designations for educational degrees, like Ph.D. or J.D. Finally, do not use Esquire or Esq. in the salutation of a letter.

Here is an example top portion of a letter showing the correct usage of the title to address a letter to an attorney:

January 21, 2012

John Q. Smith, Esquire 123 Main Street Anytown, AK

Dear Mr. Smith:

{Letter continues…}

Yours Truly, Mac N. Tosh Attorney-At-Law

Since the title is honorific, it is not customary for a lawyer to refer to himself or herself using the term Esquire. To be fair, few professions have such a range of titles: attorney, lawyer, attorney-at-law, counselor, esquire, juris doctor, (and in the U.K.) barrister and solicitor. Which title to use depends on the situation. For example, using JD or J.D. would be most appropriate in a context where the degree was relevant, for example, with the publication of a scholarly article. The most common way for a lawyer to refer to himself or herself is with the title Attorney or Attorney-At-Law.

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Esquire: How do you use the word? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

I have received a USPTO notice of allowance. I’ve no assignee to register. Is there any advantage to me registering myself, or sole trader company name [Ed. similar to a LLC in the United States], as assignee? Or is it best to allow the patent to issue to me directly, with no registered assignee?

~ UK

Hi UK,

The Assignee is the owner. When the USPTO provides you with a Notice of Allowance asking who the owner is, you do not have a choice about who to list there. You must list the owner. If you want to transfer ownership, you need to create the appropriate documentation and file the assignment paperwork to show a clear chain of title. Failure to do this can have a negative impact on the title work of the patent.

The owner of the patent enjoys the rights and must satisfy the obligations. Where to hold title to a patent can be a complex question. It would consider factors such as:

1) What is the plan for commercialization of the invention? 2) Who is performing commercial activities that read on the patent claims? 3) Is the patent potentially more valuable if the rights are held exclusively, or, if the rights are licensed to competitors? 4) How likely is the competition to infringe the claims? Are enforcement activities are expected? Does any particular plaintiff have an advantage? 5) If commercialization is risky or the startup effort underfunded, what is the likelihood of bankruptcy? 7) What is the impact on taxation?

If you employed an attorney to help obtain your patent, you should have a discussion with your attorney. If you did not use an attorney, then you should review (at least) the following sections of the MPEP:

1) MPEP 300 – Ownership and Assignment 2) MPEP 1300 – Allowance and Issue

However, please understand, most factors related to where and how to hold title require at least some understanding of other areas of law: patent litigation, bankruptcy, taxation.

Congratulations on nearly obtaining a patent.

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What is the advantage to patent issuance in my name versus a company name? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Would you be an investor for an oil field tool that could end America’s dependence on foreign oil? Our company, [Editor: Startups Anonymous, Inc.] , a Texas corporation , has a state-of-the-art technique to extract over 300 billion barrels of so-called unrecoverable crude oil. We have above ground proof from the [Ed: infamous university…] and [Ed: need patent help…]. We need [Ed: is this a securities offering?] to an actual field test to prove our concept. We have a budget to assemble 3 working commercial units that will recover crude oil. We have done the homework, have the references, budget, etc. [Ed: World-Renowned Physicist] , [Ed: and another Prestigious University] will lead our team and has 9 other patents.

~ Cape Coral, Florida

No. I’m flattered that you asked. There are three reasons that a patent attorney will not invest in your idea or partner with you. They have nothing to do with the potential of the idea or your business plan.

On this page: 1. Conflict of Interest, 2. Error and Omission Insurance, 3. Pragmatic Startup Investment Economics, and 4. Ownership compared to Contingent Fee.

Conflict of Interest: Can I give good advice about something I own?

Many patent attorneys believe that if they share intellectual property with you, they will not be able to give you unbiased, neutral advice. They really believe that they can be more objective when their own financial prospects are not at stake. I believe this.

Of course, this conflict of interest can be waived by sophisticated, well-informed clients, but, many attorneys prefer to not even have the appearance of a conflict.

Insurance: Can I afford to, or remain, insured?

Behind many lawyers, there is an insurance company that insures the advice that the lawyer gives. Think about that for a moment: Lawyer advice is insured.

The insurance company sets up guidelines for the lawyer. Insurance companies do not like when lawyers have a financial interest or ownership interest in their clients property. So, the insurance company is likely to drop the lawyer, or, raise their premiums, when the lawyer shares property with a client.

So, if I partner with just one inventor, I either need to raise rates for all clients by about 10% to 20% to cover the cost of the insurance increase. Or, I need to go without insurance, which is really not wise. Alternately, the investment immediately, and for the rest of my life (patent attorneys ought to remain insured until the last patent they file has expired), has to guarantee a return in excess of the increase of the insurance premium. I’m going to live for another 40 years; so, I would need to be guaranteed $240,000 (in today’s dollars) to cover the increase in premiums over the rest of my life. It will always be less to pay for attorney services.

Startups Economics: Who is going to pay and work in the business?

Very generally, startups require diligence, energy, and action. The fuel is money and time; without them the startup is guaranteed to fail. With a well-funded, likely-to-generate-revenue, startup business, it is not necessary or desirable to bring in an attorney as a partner. It is generally better to just pay the attorney for the services needed. Then the ownership and control remains with the people doing the work and contributing the funds, who are usually more intimately involved.

So, patent attorneys know that when they are asked to invest, there is usually a huge lack of funding. Generally, the odds of a return on the investment are very extremely low, again, because there is not sufficient funding to guarantee a return on investment.

Of course, every business is different, and, some startup business may have unusually large amounts of legal work. For example, a startup, online legal document preparation web service. That would be a good business for attorney partners, in part, because the attorney would be contributing much time and would be intimately involved on an ongoing basis.

One good reason to want an Attorney on your Team

I have met some entrepreneurs that absolutely have to have everyone invested in the business or idea. This means: everyone gets equity. They are not wrong, in fact, I find this argument convincing. If you are building a culture of “invested people”, and, those people have equity, then that is a powerful idea.

On the other hand, my insurance company still says NO.

How investment and ownership is different from Contingent Fee

Now there is one way that I can share with my client: I can make my fee contingent on a specific legal result. Again, there is a conflict of interest, however, it can also be waived. The insurance company understands and permits this type of risk.

In the attorney-client relationship, we know exactly who is responsible in what role. Attorney makes procedural decisions, client makes substantive decisions. Only one thing changes in a contingent fee relationship: that is how and when the attorney gets paid.

Co-ownership is different. With co-ownership, client and attorney are equal, and, possibly at odds over how to control the property.

Final Thoughts

So, if you ask a Patent Attorney to be your Partner or invest in your idea…

The answer will likely be “NO” for these three reasons. On the other hand, some attorneys do say “yes”. The patent attorney most likely to say yes is the one that has said yes before. Just be prepared to talk to many, many patent attorneys. Do not get discouraged.

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Patent Attorney Partner: Will you invest in my idea? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

how in the world do i get my inventions into production with no money to invest?
i have an prototype of a battery pack that can go from all the way dead to fully charged in one minute i also have a way to write video games with millions of different levels and can make a tv any size and so on but i have no money to invest what do i do?

~ homer, alaska

The first step will be to file patents. Patent attorneys, like all attorneys, provide no cost or reduced cost services for the benefit of the public. This is called “pro bono publico”, or just, “pro bono”, and it means “for the good of the public.” It will take real effort, but, you should be able to find a patent attorney to help you at no cost.

First, you need to call all eight (8!) patent attorneys that live in Alaska. Next, you might want to move your prototypes and inventions to another state, like Washington. Really! For pro bono patent work, it may be helpful for you to be able to show your prototypes in person. The State of Washington encourages pro bono activity and actively recognizes attorneys that do more than 50 hours of pro bono work each year. While Washington has a referral program, your specific need is so specialized, I recommend that you contact patent attorneys directly.

When you arrive in your new state with your inventions, use the USPTO attorney database to search by location and make a list of patent attorneys nearby. Start calling them. Explain that you have built a working prototype of an invention. Explain that you have no money. Ask politely if they ever do pro bono patent work.

Eventually, you will get one or more meetings with patent attorneys who will help you at no cost or greatly reduced cost. Be prepared to make a lot of phone calls.

Good luck with commercializing your invention!

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With no money, how do you protect an invention? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

How and where can I find out; if a product which is all ready on the market in the US has an international patent?

~ France, Europe Union

Briefly, I am going to assume that you want to find a WIPO PCT Request related to a US Patent that you already have found on an existing US Product. If you cannot find the US Patent, and, if it is marked patent pending with no number, then the US patent application may still be secret and unpublished. The conclusion is this: ***When a foreign or international patent is not found in an online database, patent protection may still exist. *** Read on for the details.

On this page: 1. Who is in your Patent Family?, 2. International Patents: Fact and Myth, 3. How to perform a WIPO Patent Search 4. Further Foreign Patent Searching

Who is in your Patent Family?

Groups of patents related to each other are called “patent families”. More than one patent may be needed to protect an invention because each country must have its own patent application. Also, inventions can develop over time, and, additional patents can be filed on the same invention and the patents can be related to each other to improve the legal rights. This spider web of patents is called a patent family.

Typically, a patent attorney will search a patent family by accessing a professional patent database. These databases allows for searching the entire patent family, including WIPO patent searching and searching foreign country databases.

This is generally the easiest and cheapest method to discover other patents in the same family. because, the professional databases are accurate and fast to use. The cost for a search by a patent attorney is generally much less than the subscription cost to the professional databases.

Using publicly available tools, a WIPO patent search and foreign patent search can done, but, it will likely miss important information. To find other patents in the family that have been filed directly in foreign countries, you have to search recursively. So, without the support of a professional database, you have to search every patent application number in every other foreign patent database to try to find related patents, where-ever they may be.

International Patents: Myth and Fact

There is no such thing as an International Patent. Patents are granted by individual countries. The only international patent organization is the World Intellectual Property Organization (WIPO). WIPO only publishes patent applications, called PCT Request. The PCT Request is a request under the Patent Cooperation Treaty. The purpose of this is to extend filing time in foreign countries. The phrase International Patent can sometimes be used to refer to the PCT Request, and, sometimes it means that someone is confused.

How patent protection is created in foreign countries

There are two ways to create patent rights in foreign countries:

1. File directly in that foreign country and claim priority directly to the first filed patent within one year. No WIPO PCT request is filed, and, a WIPO patent search will not find the patent.

2. File a WIPO PCT request, wait up to 30 months, then file a foreign patent application.

Finally, it is worth remembering that every country has its own publication rules, and, patents may not be searchable or published, even though they are filed and may someday be granted.

How to do a WIPO Patent Search (PCT Request Search)

If you want to do the research yourself, here are some online tools that might help you find related patents in the same patent family. However, if you do not find any patents, that does not mean they do not exist — it could also mean that you did not have the correct search parameters.

The World Intellectual Property Organization (WIPO) maintains a database of all published Patent Cooperation Treaty (PCT) Requests.

Step 1: Find the US patent application number

If you know the US product, and, you have the US patent application number (usually 8 digits in the form 61/123,456). Go to step 2.

If you have the US publication number, you need to find the application number. You can search the US Patent Publication database to find the application number. A publication number would be in the form US2011/0198187. So the related search query would be:

DN/20110198187

This should provide you with the Patent Application Number, which is also called the Application Serial Number or just Serial Number. Keep in mind, US patents can also relate to each other, so, you want all application serial numbers for all related US patents.

Step 2: Search PCT Requests at WIPO

Here is the WIPO online patent database. You want to search on the “Priority Number” field. The “Priority Number” is the number assigned by the originating patent office, or, in your case, the number assigned by the US Patent Office as the US Patent application number. So, if the patent application number is 61/304,502, then your search query would be:

(NP/61304502)

This should return the PCT Requests that are related to the US Patent Application.

Step 3: Cross checking your result

You are likely not to have found any patents. In this case, you would be wise to search for the patent by using other criteria that is likely to identify the patent: patent title, inventors, approximate dates of filing, and possibly keywords from the specification.

Further Foreign Patent Searching

Finally, you likely will want to do further searching directly in the countries of interest. A PCT Request is not required, and, a patent can claim priority directly to a foreign application. Here is a list of patent databases by country.

Also, a PCT request might issue from any foreign patent, so, again you want to work through all the steps for each and every patent found.

Final Thoughts

Remember, I recommend consulting with a patent attorney to identify patents of interest in foreign countries for two reasons: 1. The patent attorney’s database will be more reliable, 2. The patent attorney will be able to quickly identify the potential for rights, even before a specific application is filed in a specific foreign country. That is, the patent attorney can identify the possibility of a future application that claims priority to the original application (in the same patent family).

Good luck and happy patent hunting!

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International Patent: How do you search and find? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Can you patent something that includes other patented parts?

I need to know what I need to know about the use of someone else’s electronic device in an invention that I have in mind. Briefly, the item I am looking at is a [Editor: either a intergalactic space recombination engine or a towel.]. Any help or direction would be thankful.

~ Tacoma, WA

Likely yes. Everything builds on other things. For example, lets say you have an ordinary wooden stool. How many patents could there be?

Imaginary patents in an imaginary stool

First, There could be a patent on the stool itself. For example, the stool could have a relief area designed to form to one’s bottom for comfort.

Next, the tools might be held together with screws. The screws could be patented, for example, because they could grip wood without the possibility of backing out.

Then, the screws could be made of a metallic compound. There could be a patent on the metallic compound, for example, because of its rust-resistant property.

And, of course, the chair is cut out of wood. There could be a patent on the plant from which the wood was cut, because even plants can be patented.

So, with all these patents, how do you build the stool? Either you will need to obtain patent licenses (usually hard), or, buy the various products from the patent owner. Purchase of a patented item implies a right (license) to use that item.

How Patents Discourage Competition

Finally, it is worth considering how patents protect you from competitors. Patents convey just a single right: Patents allow you to sue competitors that are doing everything described in your patent claim. So, it is important to understand that patents do not allow you to do what is described in your patent. In other words, just because you have a patent on something, does not mean that you have the right to make, use or sell what is in that patent. This is what can happen when one patent incorporates other material that has its own patents.

Finally, I would like to encourage you to work with an attorney to write your patent application. You need to properly disclose your invention and its relationship to the patented parts in your patent. Good luck with your invention.

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Can you patent something that includes other patented parts? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Can you patent a concept that involves a different utility of an already existing product?

Let’s say there is a product out there that is used for one particular purpose and you want to use that product in a different presentation for another purpose. Is it patentable?

In an example format, let’s say I create [Editor: Just in case it was not made up and you decide to file a patent later... ]. Could something like this be patentable?

Thanks,

Peter ~ Tarzana, California

Maybe yes, maybe not. The discovery of a new way to use an existing product or old idea might be patentable, for example, if the new use is based on unknown properties of the existing product. Patent attorneys call this a “process patent” or a “method of using”.

If the patent claim only includes the old structure or composition, and, the “use” is simply a result of that old structure or composition, then the claim will not be allowed. However, if the “use” of the old structure or compound has an unexpected result, then, the patent claim can be granted. Also, the new property like must not be “inherent” to the existing product or old idea.

For example, a method of providing pain medication to animals, using an pre-existing medication, was found to have a non-addictive quality. This method of providing pain medication was separately patentable over the pain medication itself.

On the other hand, if the discovery is merely the discovery of a property of the pre-existing structure or compound, then again, the claim will not be allowed. So, if the discovery was merely that animal medication was non-addictive quality (regardless of how it was used), then the new use would likely not be patentable.

Here are a few cases that talk about a new method of using an old invention.

• In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA 1957)
• In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978)
• In re Tomlinson, 363 F.2d 928, 150 USPQ 623 (CCPA 1966)

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