Since applying for and securing a patent is a complex process, the United States Patent and Trademark Office (USPTO) recommends that you hire a patent attorney or patent agent if you’re applying for a patent. If you choose to follow that advice, here’s what you should know about hiring a patent attorney.
Patent lawyers are required to be experts in intellectual property law as it pertains to securing and protecting an inventor’s property rights to a unique, useful and nonobvious invention. In addition to passing the bar exam in the state where they practice, which all attorneys must do, patent attorneys must have passed a second exam referred to as the “patent bar exam” that grants them a license to represent clients before the USPTO. Patent attorneys are also required to be experts in one or more technical areas important to understanding clients’ inventions. This usually means they’ve earned a bachelor’s degree in a technical field of engineering or science, such as mechanical engineering, physics or biology.
When selecting a patent attorney, verify that he or she has passed the state bar exam and is in good standing with the state bar association – meaning not having been disbarred or formally disciplined. Another important step: Make sure the attorney is licensed to practice before the USPTO. Click here to do a patent attorney search at the USPTO website.
An attorney you are considering should have at least a few years of patent law experience and be knowledgeable in the subject area related to the invention you are patenting. For example, if you’re filing a biotech patent application, you’ll want an attorney with a biochemistry background, not one whose area of expertise is computer engineering. All the general advice for choosing a good attorney also applies to selecting a patent attorney.
Filing a patent application is already expensive because of the patent filing fees, and hiring an attorney only adds to your costs. There are ways to save money on a patent attorney that doesn’t mean hiring someone less experienced or less qualified, however.
Patent attorney Kathleen Lynch of Cary, North Carolina, recommends looking for a patent attorney based in a smaller city or town or in a suburb of a larger city. Because firms will have lower overhead costs for rent and salaries, you can often get a better rate than you’d pay in a big city. You don’t have to hire a patent attorney who is geographically close to you, she says, because you can communicate via phone and email and exchange documents online. Also, look for a patent attorney who offers a free initial consultation.
Another way to save money is by hiring a patent agent instead of a patent attorney. Patent agents can perform many of the same tasks as patent attorneys, including representing clients before the USPTO. If you only need help filing your patent application and getting it approved, a patent agent might be all you need. However, because he or she is not a lawyer, a patent agent will not be able to represent you in a regular courtroom if you later need advice or assistance with other legal matters related to your patent, such as patent licensing or prosecuting a competitor for patent infringement.
Do you need to hire a patent attorney at all? Do-it-yourself advocate website Nolo says it’s perfectly possible to file a successful patent application without an attorney because it doesn’t require special legal skills and you can teach yourself how to do it. You’ll have to evaluate whether you think you have the time and skill set to successfully navigate the process on your own. If you do hire a patent attorney, expect to pay a higher fee the more complex your invention is. See What's The Cost To File A Patent?
A good patent attorney will first advise you on whether your invention is patentable. A patent attorney can also advise you on whether it makes more sense to start by filing a provisional or nonprovisional patent application and whether you should also file for international protection. The attorney's work on the patent application will help you explain and claim your invention in a way that maximizes your patent rights. He or she will know how to conduct a thorough search for prior art so that you don’t waste your time and money filing a patent application that will be rejected because your invention doesn’t meet the novelty requirement.
A patent attorney will prepare your patent application to meet the USPTO’s exacting requirements to minimize delays in the patent application review process. This will free up your time to focus on your own business. If the USPTO grants your patent, a patent attorney can help you enforce your patent rights, which is essential to maximizing the economic value of your invention. And if the USPTO’s patent examiner rejects your initial application, an attorney can help you appeal the decision. A patent agent can provide many of these benefits but, as discussed above, cannot represent you in court, draft contracts or do other work only an attorney can perform.
The Bottom Line
For many inventors, hiring a patent attorney will prove to be a good investment when it comes to evaluating whether to apply for a patent, navigating the application process, saving time and increasing the chances of having a patent application approved. This is a significant investment, however, and securing a patent doesn’t guarantee you’ll recoup your expenses in profits related to your invention. For this reason, a market analysis should be an early part of your process. For more, see Patents Are Assets, So Learn How To Value Them.