What Is a Patent Lawyer?

A patent lawyer is an attorney who specializes in the area of patent law. He or she has specialized qualifications necessary for representing clients in obtaining patents, as well as in any legal suits that may arise.

When someone wants to have his or her invention patented, that means the inventor wants to have it protected so that others cannot use, copy, or sell the invention. That is where a patent attorney comes in. Hiring a qualified patent attorney can help you through the process of having your invention patented.

Benefits of Using a Patent Attorney

When patent applications are poorly drafted, they may not be successful. While there are seminars and workshops you can attend, you just won’t be as trained or well versed in this area as a patent attorney is.

While provisional patent applications are easier to do on your own than a non-provisional application, inventors often forget that there are still requirements that must be met in order to be successful in protecting their inventions.

A patent attorney, whether assisting you in your provisional or non-provisional patent application, can make the process go more smoothly. Most importantly, a patent attorney will do the legwork for you, ensuring that you have a well-drafted application to increase your chances of receiving protection.

Considerations When Looking for a Patent Attorney

Do Your Research

Before hiring the first patent attorney you see based on a Google search, you should do your research. Before looking for patent attorneys, you should conduct a search on the U.S. Patent and Trademark Office (USPTO) website to identify any other similarly situated inventions that are already patented. That way, you can prevent yourself from costly legal fees if someone else already has a similar product patented.

Once you are ready to conduct your research, make sure you find a patent attorney who is experienced. However, newly admitted attorneys can also assist you in the process, and they will be less expensive than hiring an attorney with 30 years of experience.

Know Where to Search

You can certainly speak to other inventors to find out what attorneys, if any, they used in their patent application. You can also search reliable sites using specific parameters. You may even want to hire a patent attorney who is knowledgeable in the type of invention you have. Therefore, if you have an electrical type of invention, you may want to find an attorney who is well versed in preparing patent applications for such inventions.

Once you have a list of qualified patent attorneys to consider, you can and should conduct a simple Google search on each of them. Look for publications, reputable articles, and the like to learn more about each of the attorneys’ qualifications. You can even call your state bar association and ask whether or not the attorneys remain in good standing as well as confirm their backgrounds.

Conduct Preliminary Interviews

Once you’ve narrowed it down to a small number of patent attorneys, you can conduct interviews to learn about their qualifications and costs for each respective lawyer. Make sure that each attorney provides you with upfront legal costs, preferably in writing, so that you will not be charged any unforeseen fees.

When you meet an attorney, come prepared with questions. Ask about some past patent applications, whether they have specific knowledge of your invention, and any other questions that you can think of.

Use Referrals

Referrals are important. You can speak with friends and family who know of attorneys specializing in this area. More importantly, you can reach out to other inventors for referrals.

Ignore Physical Location

Don’t restrict yourself to a specific physical location. Remember that patent law is federal. The legal fees in a major city will be higher than those legal costs in a smaller city. Again, you can work with a patent attorney anywhere in the United States. You won’t need to meet the attorney in person necessarily as today’s technology provides for a variety of communication methods, including the phone, Skype, email, and other face-to-face interactions without physically being in the same room.

Frequently Asked Questions

1. Should I only hire a registered patent attorney?

In the U.S., the USPTO has rules and regulations governing all patent attorneys or agents. A patent attorney who is not registered with the USPTO is not legally able to represent inventors before the USPTO. In addition, a USPTO-registered patent attorney must maintain a good reputation, demonstrate good moral character, and have the requisite legal and technical knowledge to perform the job.

2. What about patent agents?

A licensed patent agent is someone who has taken and passed the USPTO patent bar and is licensed and registered with the USPTO to prepare and file patent applications on behalf of clients. As of November 2013, the USPTO indicated that there are 42,502 active patent practitioners, which includes 10,864 patent agents and 31,638 patent attorneys. Patent agents can work for a law firm, a technological firm, or in the legal department of a corporation. Patent agents can also work individually or as patent examiners at the USPTO.

3. What is the process like after I hire a patent attorney?

After you hire a patent attorney, you as the inventor must execute a power of attorney authorization, which is filed with your patent office. After you appoint your attorney, you will not receive any communications from the patent office, but rather such communication will be directly with your attorney. With that being said, however, you may still reach out to the patent office should you have any questions regarding timeframe or the process itself.

4. How is a patent agent different from a patent attorney?

Both positions generally have the same role. Both roles require significant knowledge of the patent laws, how the patent process works, and other rules.

The one significant difference between a patent agent and a patent attorney is that an attorney has attended and graduated from law school, passed the bar exam, and has the ability to practice law in one or more states in the U.S. Moreover, the patent attorney must also pass the USPTO’s patent bar. A patent attorney, unlike a patent agent, can partake in courtroom proceedings and advise clients.

5. How do I choose a good patent attorney?

As previously mentioned, the one significant difference between a patent attorney and a patent agent is the fact that an attorney has obtained a law degree whereas a patent agent has not. Therefore, a patent agent is simply someone with a bachelor’s degree or someone who meets the other conditions, i.e. practical experience, etc., who takes the patent bar and subsequently works as a patent agent. A patent attorney, however, attends and graduates from law school, takes and passes the bar exam, and subsequently decides to practice in the field of patent law. The attorney is then required to take the patent bar in order to operate in this area.

A good patent agent or attorney will provide you with a written opinion as to the patentability of your invention. The written opinion should be detailed and specific, and it should answer any questions you may have. Also be sure to choose an attorney or agent who will provide you with a free consultation so that the professional can determine if they can or cannot help you with your patent application. You’ll also want to obtain the price upfront for the fees associated with hiring an agent or attorney in this area.

Contact Us

If you need help learning more about becoming a licensed agent, or if you need help finding a licensed patent attorney, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.