Inventors often assume that they should hire an attorney to assist them with the patent application process. However, an attorney is not always essential, especially if an invention is not very complex or if the inventor does not anticipate opposition to their claims. You may be able to prepare a patent application or a provisional patent application on your own after researching the law online. This can save substantial fees, since hiring an attorney can cost an inventor several thousand dollars or even more.
On the other hand, working with a patent lawyer can offer important benefits. An attorney can make sure that you prepare your application in a way that fully protects your rights to your invention. The process of prosecuting a regular patent application can be challenging because it involves a distinctive format and requires a thorough familiarity with patent laws and regulations. Filing a provisional patent application is simpler, since the requirements are less formal. The provisional patent application is relatively short and requires only a general description of how the invention works, as well as informal drawings.
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How a Lawyer Can Help
A patent attorney can carefully examine whether your invention is likely to qualify under the four main requirements for patent protection. The invention must be useful, innovative, novel, and non-obvious, as those terms are defined by patent law. The attorney also can help you make sure that you submit all of the necessary components of the application in the appropriate format and that you frame your claims in a way that is likely to avoid challenges. For example, the claims should explain how your invention is different from previous inventions, known as “prior art.”
An attorney can help you conduct a patent search to determine the full scope of the prior art in your field. This will need to cover patents and publications throughout the world. If you get a patent, the attorney can help you monitor for possible infringements and take action to enforce your rights.
Some of the key factors to consider in deciding whether you need a lawyer include the time and effort that you are willing to spend on the application, as well as your organizational and writing skills. If you would prefer to spend more time improving your invention or developing new inventions, you may not want to dedicate hours to researching the law, conducting a patent search, or making drawings. If you are not a natural writer, or if you are uncomfortable following the formal rules of the USPTO, hiring an attorney can help you avoid any pitfalls. Working with a patent lawyer also can allow an inventor to transfer the logistical burdens of the process to someone else. This can take some of the stress off their shoulders.
It may be helpful to check the USPTO’s register of active patent practitioners (and their disciplinary history) because only registered patent attorneys and agents and those granted limited recognition can represent patent applicants before the USPTO. Certain independent inventors and small businesses may also qualify for the USPTO’s patent pro bono program.
Patent agents should not be confused with patent attorneys. Both agents and attorneys need to be certified, and both of them need to be familiar with the technical terminology of the inventor’s industry. However, a patent agent cannot practice law on behalf of an inventor. They cannot represent them in court or even provide legal advice about their rights as a patent owner. Patent agents can simply assist with preparing and filing the application, as well as communicating with USPTO examiners. If the inventor chooses to revise the application, a patent agent can assist with that process as well.