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Congress last year moved to improve the patent system, and the little guy was supposed to come out on top. Champions of the American Inventors Protection Act of 1999, which took effect on Nov. 29, declared that the law would aid small-time inventors working in their garages. The law awards both neighborhood putterers and corporate engineers, for the first time, “provisional rights” to their creations before a patent issues. The law also limits secrecy around engineering breakthroughs to 18 months, far shorter than before. Less acknowledged is that these same inventors will pay for the changes — in higher attorney fees. MORE WORK AHEAD The patent law imposes multiple new obligations on applicants and their attorneys. The law’s most dramatic move is to insist that applications be published after 18 months. The law now also penalizes applicants for shilly-shallying by their counselors. These changes, patent attorneys say, will force them to spend much more time and resources at the start. “There’s a burden on law firms to do more things for the patent office that the patent office used to do,” said Joseph Walkowski of Salt Lake City’s 20-lawyer Trask Britt. That burden will be passed on to clients, big and small. New challenges that inventors and lawyers now face include: � Early tactical decisions about whether to file and how to proceed. � Increased tracking of the progress of applications. � Forgoing now-routine requests for extensions. � More vigilance in policing infringement and others’ applications. To fail to be diligent is to risk malpractice claims. “There are more things we have to do more perfectly, and earlier,” Walkowski said, predicting a 10 percent rise in clients’ costs. “They’re going to pay twice,” contended Norman Balmer, a past president of the Intellectual Property Owners Association and chief patent counsel at Union Carbide. He said that applicants will pay once for the increased attorney time and once for the expansion of the application process. “The patent office added a hefty system to keep track of that, and the fees necessarily will go up for cost recovery,” he said. Lawyers say that they are struggling to keep the cost reasonable. “I’m advising all my clients to do as much legwork as they can by themselves,” said John Wahl of the Denver office of Merchant & Gould. He has enough to keep track of, he said: “The number of places when an error can be made have gone up by an order of magnitude.” “The reaction that I’ve seen more frequently than not is the surprise on many people’s faces of how significantly the practice has been changed,” said Charles Van Horn, of Washington, D.C.’s Finnegan, Henderson, Farabow, Garrett & Dunner. “The older ones have said it may be time to retire.” The law will require technological adjustment, too. Patent examiners are requiring that all amendments to applications be submitted electronically. “We feel that will perhaps lead to the updating of systems. We kind of need that to efficiently handle these applications,” said Bob Spar, the director of the PTO’s Office of Patent Legal Administration. SMALL-TIMERS v. BIGGIES On top of such disruptions, small-time clients have to compete with corporations, who don’t want to lose time off their patent term simply because their lawyers are overwhelmed. “The large corporations are on that and are pressuring firms not to take extensions,” said James Carmichael of Lyon & Lyon in Washington, D.C. Without a way to push back deadlines, said Walkowski, “either you are working evenings and weekends, which most of us already are, or you are hiring more attorneys.” To deal with such pressure, said Karl Cannon, of Sandy, Utah’s Clayton, Howarth & Cannon, his firm and others are contemplating a two-tiered fee arrangement under which clients wanting special attention given to their files to avoid delays would have to pay a surcharge.

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