By MATT CHANDLER
Buffalo Law Journal

When U.S. Patent No. 3,691,140 was issued Sept. 12, 1972, it faced the same long odds that thousands of other patented-but-not-yet-marketed inventions face every year - an uncertain future. The product in question, Acrylate Copolymer Microspheres, had been invented several years earlier, as legend goes, quite by accident.

Nearly four decades later, with patent No. 3,691,140 long-since expired, the product for which inventor Spencer Silver sought the patent is now used in homes and offices worldwide. Chances are, you have some within arm's reach as you read this.

Acrylate Copolymer Microspheres is better known as the stuff that makes Sticky Notes sticky, and with worldwide sales in the billions of units, the product made a small fortune for its manufacturer, 3M.

For every pad of Sticky Notes, there are thousands of patents for which inventors never recoup their costs, and thousands more for inventions that save lives, revolutionize business and literally change the world.

Behind every one of them is a registered patent attorney who was charged with writing and filing the patent on behalf of the inventor.

The complexities of patent law make it unlike any other practice area in the field. In an 1882 ruling, the Supreme Court called patents "one of the most difficult legal instruments to draft with accuracy." Good thing, then, that in addition to passing the bar exam, registered patent attorneys must hold a degree in science or engineering and also pass a second bar exam related strictly to patent work.

Little competition locally

With only 28 registered patent attorneys currently practicing in Buffalo, said registered patent attorney Robert Simpson, there is an abundance of work to be had.

"There are about 29,000 patent attorney and agents registered nationwide," said Simpson, a partner in Williamsville's Simpson & Simpson PLLC, the largest patent firm in Western New York. "But some of those are retired, or work for private companies, so my guess is there are about 20,000 active in the U.S."

If you're asking yourself how 20,000 patent attorneys can constitute a shortage, here is some perspective: There are currently more than 1.14 million licensed attorneys in the United States, meaning patent attorneys make up less than 2 percent of the total attorney population. That's good news for firms like Simpson's.

"There are about 350,000 patent applications filed every year by inventors," Simpson said, "and 200,000 or so come from foreign applicants. The bottom line is, there has always been a scarcity of competent patent attorneys to do the work that needs to be done."

Simpson said a backlog in the United States Patent and Trademark Office has stretched the average wait time for approval of a patent to between three and five years. Given the 20-year shelf life on a patent, do the math and you'll see that local patent attorneys are keeping busy.

While the apparent shortage of patent attorneys may be inconvenient for inventors looking to protect their ideas, Vincent LoTempio said it is why he chose patent work.

A partner with Kloss Stenger & LoTempio who's been a patent attorney for 10 years, LoTempio said he enjoys being part of such an exclusive club. He attributes the lack of patent attorneys to the specialized nature of the practice area.

"It's difficult, because you have to have that science background, which I would guess 98 percent of attorneys don't have," he said. LoTempio returned to school at night while working full-time to complete his coursework.

"I did that for five years in order to be able to qualify to be a patent attorney," he said. "If you tell a lawyer right now, ‘You're going to have to spend $15,000 and go back to school to get another degree,' nobody wants to do that."

Risky, intensive work

Despite the high number of patent applications, Simpson said it isn't easy to lay claim to an invention.

"We are now at 7.7 million-plus U.S. patents issued, and 25 to 30 million patent documents are in the database for Europe, Japan and the U.S., so it's a real challenge to define and claim an invention in such a way that's it novel in view of everything that's gone before it."

He also pointed to the price tag to secure a patent, citing cost as a prohibitive factor that keeps many individual inventors on the sidelines.

"The average cost of a simple mechanical patent is five to seven thousand dollars just to apply, then another four, five, six thousand over the course of the time you are patent pending to prosecute," Simpson said.

Add to those numbers the fact that less than 50 percent of patents filed are approved by the USPTO, and you can see the financial gamble that makes the patent process a risky proposition for small firms and, especially, solo inventors.

Tips from a former examiner

Elma lawyer Pat Costanzo has seen the issue from both sides of the fence. Though she earns her paycheck as a patent attorney today, Costanzo is a former patent examiner for the USPTO. The job gave her, she said, great insight into the world of patent preparation.

"To be a good patent attorney, the area one has to know better than any other is how to write claims," she said. "Writing claims is not something that comes intuitively, even with a good mentor." For that reason, Costanzo said she sought out a position with the USPTO as a way to learn the art of claim-writing on the job.

"Being older at the time, I didn't have 20 years ahead of me to learn, so I went to the Patent Office, where you just read claims all day long," Costanzo explained. "You very quickly learn to see who is an excellent draftsman and who is not, and I learned a lot in a very short time."

Given the fact that she has been the one holding the rubber stamp of approval in the past, what advice does Costanzo have for those crafting their first patents?

"You would think you want to be very specific when you draft a claim to make it difficult for people trying to infringe," she said.

"But don't forget, every time you put another limitation in, all a competitor has to do is develop a product that does not have one of those limitations, and he is not infringing on your patent."