Key Takeaways

  • Invention Patent Attorneys vs. Patent Agents: Only patent attorneys can provide legal representation in court and draft contracts, whereas patent agents specialize in filing patents with the USPTO.
  • Choosing the Right Invention Patent Attorney: Consider technical expertise, industry experience, and their track record in obtaining strong patents.
  • Steps in the Patent Process: Includes conducting a patent search, filing a provisional or non-provisional patent application, and undergoing the examination process.
  • Cost Considerations: Hiring a patent attorney involves initial consultation fees, search fees, application filing fees, and potential litigation costs.
  • Patent Protection Benefits: A strong patent provides exclusive rights to an invention, helps secure funding, and deters competitors from copying the idea.
  • Common Patent Issues: Rejections due to prior art, scope of claims, and maintaining patent protection over time.
  • Finding an Invention Patent Attorney: Utilize online directories, USPTO listings, and legal marketplaces like UpCounsel.

An invention lawyer will help you secure exclusive rights for your invention. He or she will also help you file your patent application with the United States Patent Office (USPTO).

As soon as you've filed your application, you will achieve "patent pending" status and can start sharing your idea with various companies who may want to make an investment. Hopefully, they'll want to purchase the patent application from you or maintain exclusive rights over your product or idea.

Patents are so critical that most companies won't even speak with you until you have "patent pending" status. This is where an invention lawyer comes in. He or she will help you sort out all the details throughout the application process.

Patent Attorney Versus Patent Agent

Some inventors wonder if they should seek counsel from patent attorneys or patent agents. Simply put, patent agents aren't lawyers. They cannot litigate on your behalf or perform other services that may be considered as the practice of law.

For example, a patent agent would not be able to create a contract for your patent. He or she will have passed the patent bar, however. That comprises a select portion of the law that deals only with patents and trademarks.

A patent agent will be able to help you submit your application to the United States Patent and Trademark Office (USPTO). As far as the USPTO's concerned, patent agents are just as qualified as patent attorneys. However, they must be registered with the Patent Office.

A patent attorney will be able to see you through the process, as well. Both patent agents and patent attorneys are eligible to bring your application before the USPTO. They're both also required to possess a degree in a technical discipline, i.e., chemistry, electrical engineering, mechanical engineering, or pharmacology.

Roles and Responsibilities of an Invention Patent Attorney

Content: An invention patent attorney specializes in protecting intellectual property by securing patents for inventors and businesses. Their primary roles include:

  • Conducting patent searches to ensure an invention is unique and not already patented.
  • Drafting patent applications with detailed claims that maximize protection.
  • Communicating with patent examiners during the examination process.
  • Representing clients in patent litigation if infringement occurs.
  • Advising on patent licensing and commercialization strategies to help inventors monetize their ideas.

A patent attorney's expertise extends beyond filing applications; they ensure that the inventor's rights are enforceable and provide strategic guidance for long-term protection.

What to Look for in an Invention Lawyer

Whether you're seeking the counsel of a patent attorney or a patent agent, there are two things to keep in mind:

  • His or her technical expertise
  • Your level of trust.

Regarding trust, you'll find that most patent professionals are trustworthy. However, like anything else in life, some have gone on to make an easy living by filing applications with the USPTO that would never command money from a future licensee or hold up in court.

Ask the patent professional if he or she will delegate the patent search to a paid searcher or do the work him or herself.

In addition, you'll want to insist that the patent professional provides his or her patentability opinion in writing. This will remove you from the grips of a patent professional who's just looking to make a quick buck. Not only should you request this opinion in writing, but also be sure it includes a comparison between other relatable claims that were found throughout their search.

You'll know if you feel comfortable with this person or not. You'll sense his or her integrity right away. Don't let him or her hurry you through your questions or requests.

A final note regarding trustworthiness will come through in the pay rate. Patent agents and patent attorneys who work for themselves are usually more affordable than large legal firms and may be able to devote more time to your application.

Common Mistakes to Avoid When Hiring a Patent Attorney

Finding the right invention patent attorney is crucial to securing strong patent protection. Avoid these common mistakes:

  • Choosing a general attorney instead of a patent specialist: Patent law is complex and requires technical and legal expertise.
  • Not checking USPTO registration: Only registered patent attorneys or agents can represent inventors before the USPTO.
  • Failing to discuss fees upfront: Understand the full cost, including filing, attorney, and maintenance fees.
  • Overlooking experience in your industry: Ensure the attorney has experience with patents in your technical field.
  • Skipping due diligence: Read client reviews and check the attorney’s success rate in securing patents.

These steps will help inventors avoid legal and financial pitfalls during the patent process.

How to Find an Invention Lawyer

Now that you know what to look for, here are the steps you can take to find an invention lawyer:

  1. Go to the USPTO's website. It contains a list of patent agents and patent attorneys by state.
  2. Read through the latest issue of Inventors Digest. Patent agents and attorneys advertise their services there.
  3. Scour your local Yellow Pages. The only thing to note is that the Yellow Pages may not clearly distinguish between patent agents and attorneys.
  4. See if you have a local inventor's club in your area. This information will be listed on the United Inventors Association website.

How Much Does a Patent Attorney Cost?

The cost of hiring an invention patent attorney varies based on factors such as complexity, attorney experience, and type of patent. Here’s a general breakdown:

  • Patent search: $300 - $3,000, depending on complexity.
  • Provisional patent application: $1,500 - $3,500.
  • Non-provisional patent application: $5,000 - $15,000+.
  • USPTO filing fees: $75 - $2,000, depending on entity size and type of patent.
  • Office action responses: $1,000 - $3,000 per response if the USPTO requests modifications.
  • Patent litigation (if necessary): Can range from tens of thousands to millions in legal fees.

Inventors should request a detailed fee structure before committing to legal representation.

What's the First Step in Filing an Application?

One of the first things you and your agent or attorney will do is complete an invention disclosure form. This form will ask you to outline the basic details pertaining to your invention, including what your invention can solve and how it differs from prior inventions.

What Happens After You File a Patent?

Content: Once you submit a patent application, the following steps take place:

  1. Patent Pending Status: Your invention is protected while the USPTO reviews your application.
  2. USPTO Examination: A patent examiner assesses the invention’s novelty and applicability.
  3. Office Actions: The USPTO may issue rejections based on prior art or unclear claims. A response from your attorney is required.
  4. Final Decision: The patent is either granted, requiring maintenance fees, or rejected, with possible appeal options.
  5. Enforcement and Licensing: Once granted, the patent holder can license, sell, or enforce the patent rights.

Inventors should remain engaged throughout the process to maximize protection and commercialization opportunities.

Frequently Asked Questions

  1. Do I need a patent attorney to apply for a patent?
    No, but a patent attorney significantly increases the chances of a strong patent approval and helps navigate legal complexities.
  2. How long does it take to get a patent?
    The process can take 18 months to 3 years, depending on the complexity of the invention and USPTO examination timelines.
  3. Can I file a patent before my invention is complete?
    Yes, you can file a provisional patent application to establish an early filing date while refining your invention.
  4. What happens if my patent is rejected?
    You can respond with an amended application or appeal the decision with the assistance of a patent attorney.
  5. How do I enforce my patent rights?
    Patent owners can send cease and desist letters, license their patents, or file lawsuits against infringers with legal representation.

If you need help finding an invention lawyer, 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, Menlo Ventures, and Airbnb.