When Should I Get a Patent Lawyer?
When it’s smart to have a lawyer help with your patent rights
on November 14, 2022
If you’re an inventor who has come up with a new process, machine, formula, or design, you want to ensure your invention is protected from others using or copying it.
This is where patent law comes in. A subset of intellectual property law, patent law gives individuals or businesses legal protections for their inventions.
“Patents are intended to cover inventions—not quite ideas. It has to be a bit more than an idea. It has to be some sort of technological innovation or some novel improvement over what already exists,” says Boston intellectual property lawyer Rory P. Pheiffer.
“The reason you file for the patent is to protect your ownership rights in that invention,” he says.
To qualify for a patent, an invention must be useful, novel, and non-obvious.
There are two types of patents:
- Utility patent. This type of patent is for new machines, processes, and formulas.
- Design patent. This patent is for new designs for machines or processes that already exist.
To register a patent, inventors must file a patent application with the United States Patent and Trademark Office (USPTO).
Where does a lawyer fit into getting a patent? Is it necessary to have a lawyer? Is it financially worth it?
Because the process of filing a patent application is complex and because it’s easy to make mistakes, Pheiffer says, “I would engage a patent attorney.”
A patent attorney is an expert in the field. You can “talk to them about [your] invention and figure out what you want the claim strategy to be [in your patent application],” he says.
“While the inventor can certainly do a good job of informing the patent attorney or the public of how their inventions operate, it’s important to have an attorney help you think through the claims.”
What are the claims in a patent?
“Patents are property rights, and just like the deed to a house defines the boundaries of a plot of land, the claims at the end of the patent describe exactly what the patent covers,” says Pheiffer. “The claims define what the invention is. Thinking through claim strategies and the best ways to draft and amend claims is often best done by a patent attorney because it’s the nature of their business and what they do every day.”
This article will lay out some of the factors to consider in getting a lawyer to help with your patent.
What a Patent Attorney Does
In order to practice law in the state where they live, individuals must pass their state bar exam. The bar exam is the only major test for becoming a licensed attorney for most lawyers.
Having passed the bar, attorneys can practice anything from personal injury law to estate planning.
With patents, however, there’s another step that attorneys must take.
To file patents with USPTO, an attorney must not only be licensed to practice law in general. They must also pass the Patent Bar Exam (the short version of the test’s official title, the “Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office”).
Once an attorney passes this exam, they are called a “registered patent attorney” and are fully qualified to file patents.
To effectively guide an invention through the patent process, patent attorneys must not only have legal knowledge, they also need to possess a certain degree of knowledge about the technical field in which the invention is proposed.
Technical knowledge of the field allows an attorney to draft effective applications, research other patents, and answer questions from the USPTO about their proposals.
A patent attorney’s unique qualifications can bring many benefits to an inventor seeking a patent. These benefits include:
- Drafting a Provisional Patent Application
- Filing the patent application with the patent office
- Patent prosecution (guiding the patent through the registration process)
- Handling patent rejections
- Patent searches
- Patent litigation for patent infringement
In short, inventors can offload an enormous amount of effort onto lawyers who are experts in patents.
How to Find a Good Patent Attorney
As a baseline, a lawyer you get to help with your patent registration must have passed your state’s bar exam, which licenses them to practice law as an attorney.
They must also have passed the Patent Bar Exam to be qualified to file patent applications with the U.S. Patent and Trademark Office.
With these two essential qualifications in place, other things you want to look for in a lawyer include:
- The lawyer’s experience
- How many patent applications they have handled
- The type of patents they typically deal with or have expertise in
- Their background in patent litigation and enforcement
- Where their law offices are located
- Whether you feel like the lawyer is someone you can work with easily
There are different ways to gain information about a lawyer. One is to visit their or their firm’s website. Lawyers will typically give substantive information about their experience and practice in their bios.
An excellent way to locate qualified lawyers in your area is to search the Super Lawyers directory. Once you find a lawyer nearby, the directory will give you links to their website so you can learn more and contact them.
How Are Patent Lawyers Paid?
There are a few commonly used pricing methods for legal services, including:
- Flat fees
- Hourly billing
- Contingency fees
The type of billing that a lawyer uses depends on the type of legal issues they deal with and your particular needs.
For example, are you getting a lawyer to do a one-time project, such as drafting a document? Or are you retaining the lawyer long-term for their legal representation if the need arises?
It’s important to talk about billing when you meet with a lawyer.
Questions for a Patent Lawyer
Most patent attorneys provide free case reviews for potential clients. These meetings let you get legal advice and decide if the attorney or law firm meets your needs.
To get the most out of a consultation, ask informed questions such as:
- What are your attorney’s fees and billing options?
- What is your full range of legal services?
- How do I get patent protection for my invention?
- Should I file a provisional patent application before a full patent application?
- What is the difference between having a patent and having the freedom to operate?
Once you have met with a lawyer and gotten your questions answered, you can begin an attorney-client relationship.
Look for a patent attorney in the Super Lawyers directory for legal help.