Do I Need a Patent Attorney?

Do I Need a Patent Attorney?

by Joe Runge, Esq., June 2015

After weeks of endless work in your cramped garage, eureka! They said it was impossible but your prototype works. Before getting in front of investors you need to protect your intellectual property. It’s a million dollar idea but you are on a garage inventor budget. Do you have to spend your limited resources on a patent lawyer to protect your invention? Before you decide, there are a couple of critical things to know.

Who Are Patent Attorneys?

Not every lawyer can file a patent. To file a patent for an inventor, even a provisional patent application, a lawyer must pass a test and be registered with the patent office. To qualify to take the test, the lawyer must show education or certification in a technical field. Patent lawyers are programmers, scientists, engineers or technicians that have gone to law school and passed two tests: a state bar exam and the patent bar exam.

Patent lawyers write a lot of patents. Oftentimes they specialize: a pharmaceutical firm uses different patent lawyers then a software studio. A patent law attorney is an expert in patent law: often an expert in the patent law surrounding specific technical area.

Having expert understanding of a particular area of patent law is enormously valuable. A lawyer that has dedicated a career to getting patents on inventions in telecommunications will know how to write a cell phone company’s patent, anticipate the patent office’s rejections and use the law to get you your patent. A patent lawyer’s expertise is also expensive. Patent attorneys are among the highest paid attorneys and innovative companies spend a lot of money to protect their intellectual property.

Do I Need A Patent Attorney To Apply For A Patent?

You do not need a patent attorney to apply for a patent. As an inventor, you can submit a patent for your own invention on your own behalf. But is it a good idea?

Writing a patent is very difficult. Not only do you have to convey the technical details of your invention, you have also get the kind of patent that will protect your million dollar idea. Patent law is a highly technical legal field about highly technical subjects. Even if your invention is technically simple, writing a patent yourself can be very risky.

For example, you may build your prototype entirely out of 3d printed thermoplastic. You could easily use other kinds of 3d printing materials but unless you specifically say so, then the patent office may only let you patent prototypes made out of 3d printed thermoplastic. There are dozens of other omissions or oversights that can dramatically limit what you can patent.

If you are going to write your own patent then it is a good idea to have a patent lawyer look over what you write. It will cost much less than paying a lawyer to write your patent application and give you much of the same benefit.

Alternatively, you can write and submit your own provisional patent application. Provisional applications give you a one year window to write a formal patent application. Provisional applications lack many of the formalities that a patent applications include. The provisional application allows you to present to investors with a patent in hand. You can wait until you have their investment before paying a patent lawyer to draft your application.

How Do I Find A Patent Attorney?

There are more online tools for inventors now than ever before, making a patent attorney search a little easier. Google allows you to search every issued and pending patent at the patent office. Every issued patent or patent application lists the lawyer that wrote it and what firm the lawyer works at. Start searching for lawyers that write patents in the technical field of your invention.

Look at the claims of the patent. In United States Patents, the claims are a numbered list of sentences at the end of the document. The value of most patents comes from their claims, so find lawyers that get broad claims that contain specific, meaningful language. Feel free to call inventors (or companies) that use the patent lawyer and ask if they would recommend the lawyer.  

Call up the patent lawyer and have a frank conversation. If you are worried about cost, ask to have a cap in place before the lawyer does work. If you are concerned that the lawyer lacks training to understand your invention then quiz the lawyer. You are the expert on your invention - find the expert on your patent.

You do not need a patent lawyer to file a patent but it almost always helps. Know what you are looking for. Roll up your sleeves and do as much of the work yourself as you can. If you are not comfortable filing the patent than talk to as many people as you can until you find someone that will file what you need for a price you can live with.

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