Finding your patents
Since 1990, 4,008,329 utility patents have won U.S. Patent and Trademark Office approval. In 2014 alone, the USPTO granted more than 300,000 of them. And those awards went to a wide range of patenting entities — 38,000 of them, in fact.
If you do legal work for companies of any size, those clients of yours likely own at least one patent and may have quite a few (several hundred entities received 40 or more patent grants just in 2014). Do you have any idea how many or what inventions they cover?
Don’t worry if you don’t. You can get a list and see a copy of the patents in no time flat.
Start by going to the Quick Search feature of the USPTO Patent Full-Text and Image Database. Type your client’s name in the “Term 1” box, choose “Assignee Name” from the drop-down menu beside “Field 1”, and then click on the “Search” button.
Et voila! The USPTO’s search engine produces a list of all the U.S. patents that your company owns legal title to, as a matter of record. The USPTO keeps track of patent assignments.
The list shows, on the left, each patent’s USPTO number and, in the right-hand column, the patent’s descriptive title. Both contain a link to an html copy of the patent. The landing page includes an “Images” option that takes you to an analog version in which you can see the “figures” that the body of the patent uses to help explain the invention.
I know about the database largely because I get a lot of inquiries from people who want me to look at representing them on a contingent-fee basis. They hope that their patents deserve (and with the right handling will yield) many millions of dollars in royalty payments. The USPTO’s databases allow me and others to examine the patents quickly and without cost.
If you’ve read this far, you probably have tried a Quick Search in the USPTO Full-Text and Image Database and saw that the client does hold title to one or more U.S. patents. What now?
Ask for a portfolio review
You should start by scanning the patents to get a sense of what field or fields they cover. That will help you make guesstimates about what products or services may infringe the patents and how much value the inventions of the patents add to those products or services. It may even assist you enough that you can tentatively identify possible infringers.
Assuming that your high-level review of the patents leads you to think they may have significant value, at this point you should locate a lawyer who will examine your client’s portfolio (even if the portfolio = one patent) with a view to enforcing the patents against infringers.
If you don’t know a lawyer who does that sort of thing, don’t ask Google. You should seek the recommendation of a lawyer or lawyers you know and trust. And get at least a couple of names of individuals, not firms.
Many lawyers who handle patent infringement cases on a contingent-fee basis will happily scan your portfolio. They will look for gems that could both give them a chance to earn a big fee and enable your client to award you a handsome bonus.
But don’t expect too much. The lawyer won’t likely provide you with an opinion about the value of your patents (unless of course you pay for that service). Nor may the lawyer expend a lot of resources investigating a doubtful case.
But you’ll get a quick read on whether your client’s portfolio justifies a closer look. What do you have to lose?