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How to secure oneself against deceitful practices on part of unfair patent attorneys?

Sept. 28, 2017

Almost eevery day company Zuykov & partners LLC receives phone calls of the following contents: "Hello, I would like to patent an idea! But a person I'm acquainted with, has told me an unpleasant story: he has filed an application for an invention through a patent office and obtained a waiver on part of the Federal Institute for Industrial Property. And later on it was revealed that 1 day prior to his application obtaining by the Federal Institute for Industrial Property, the same application had been obtained from another person. Thereby the name, text of description, city, coincide…there are too many coincidences. No doubt, the patent attorneys have "betrayed" the application materials to an interested person having got more money from him/her, than from a person I'm acquainted with. How can I trust you after it?".

In this article we will give you several pieces of advice how to address correctly the choice of a good faith and professional agency engaged in the field of the intellectual property protection and how to protect oneself against such situations.

            Naturally any person or company in person of a group of the researchers-developers of an innovative technical solution (hereinafter an inventor), if he/she is a citizen of the Russian Federation (and in case it is a legal entity, then it shall be registered in the RF territory), can make a description on its own, an abstract and a claim or utility model, fill in an application, pay fees and dispatch a batch of documents to the Federal Institute for Industrial Property. But as a rule, the inventors who are not acquainted with the requirements of the Russian patent laws and those who don't have experience in applications filing often come across repeated requests for a search as to form and substantive examination, even worse with recall of an application or a rejection of patent. That's why, to render assistance in preparing materials of an application, preparing answers to requests of an examination, prolongation of periods of consideration, fees payment, in the subsequent annual support of the patents, there exist different patent bureaus, agencies and other legal entities that render the services in the field of the intellectual property protection. A plenty of the offers from the patent officials and patent attorneys for such services rendering privately also exists in the market. However we don't recommend you to address to "private traders", despite low prices of the offered services because in this case the risk of deception or poor-quality works performance is increased many times. If you none the less have made up your mind to it, then verify obligatorily if this person actually has an official status of a patent attorney. And one can make it on the webpage of the Federal Institute for Industrial Property.

            And how not to make a mistake in choice of a representative in terms of such plenty of the offers and a wide range of the prices for the services?!

            Firstly, when choosing a patent company it is necessary to pay attention to a date of its foundation, numerical strength, charter capital and other data on the state registration of the legal entities that are in an open access on net Internet (for example, on the webpage: https://egrul.nalog.ru/).  A serious company that is engaged in the issues of the intellectual property shall exist in the market at least 5 years and have at least 15-20 employees on a full-time basis, including with a status of patent attorneys in different technical fields (medicine, mechanics, electric engineering etc.).

Secondly, it is necessary to get acquainted attentively with the webpage of this company paying attention to the professional experience in the field of registration and protection of the intellectual property (trademarks, patents for inventions, utility models, design inventions, the author's and related rights, namely the fact what large customers a company works with, and what number of the Russian and international applications it filed within a year.

Thirdly, to seek the information about the company participation in international exhibitions, conferences and seminars. It is an indicator that a company is developing actively and aspires to be in touch with all the world pieces of news and events in its area of activity.

Fourthly, read feedback on this company on the net Internet. If a company was found to have participated in fraudulent schemes, you will for sure come across this information. On the webpages of the patent offices of different countries one can come across publications warning of dishonest persons who are unfair and squeeze money. For example, clicking the link: http://www.wipo.int/pct/en/warning/pct_warning.html, you will be able to see such warning concerning company IP Direct, that offers to execute an international patent which does not exist in practice.

 Besides that, there exist ratings among the Russian companies in the field of protection and registration of the intellectual property (for example, the rating on the version Pravo.ru). Having studied this rating one can assess what companies are the best ones in this field and address namely to them.

            When you have determined several companies for yourself, specify obligatorily during a meeting or a phone call, beside a cost of the offered services and terms of their fulfillment, whether they conclude a confidentiality agreement with an applicant,   i.e. a contract entered into two parties with the goal of a mutual change of materials, knowledge or other information with the access limitation to it to the third persons. This type of the agreements is needed for prevention of any confidential information leakage: from a commercial secret to personal data. The goal of such contract is - to impose a duty on a party that is guilty of the confidentiality disclosure, for losses compensation to a party not in fault. In case of disclosure an agreement is a legal basis for a suit on damages recovery. If a company waives signing this agreement, don't hesitate to leave it.

            A serious and professional legal company, first and foremost, will offer you a confidentiality agreement signing and won't damage its reputation with affaires such like those described at the beginning of this article.

If you live in a small inhabited city in which there are no legal companies that are engaged in the intellectual property protection, it is not a cause to put an end to your idea. In terms of modern development of communication it does not matter at all what city you are from: Vladivostok, Moscow or Kaliningrad, all the issues are solved very simply using E-mail and phone calls. That's why it is better to address to a company that is trusted and that has gained the positive reputation in Saint Petersburg or Moscow, than to be bitten by swindlers 100 m far from house.

We do hope very much that our pieces of advice will help you to make a correct choice that will obligatorily bring a desired result!

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Author of article

Ludmila Lisovskaya

Ludmila Lisovskaya

Patent Specialist / Chemical Specialist