When Should I Get a Patent Lawyer?

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. 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 Rory P. Pheiffer, an intellectual property lawyer at Barnes & Thornburg in Boston. “The reason you file for the patent is to protect your ownership rights in that invention.”

Where does a lawyer fit into getting a patent? Because the process of filing a patent application is complex and it’s easy to make mistakes, “I would engage a patent attorney,” Pheiffer says. “They’re an expert in the field who can talk to you about your invention and figure out what you want the strategy to be in your patent application.”

This article will lay out some of the factors to consider in getting a lawyer to help with your patent. 

The Legal Side of Patents

To qualify for a patent, an invention must be useful, novel, and non-obvious. Inventors must file a patent application with the United States Patent and Trademark Office (USPTO).

There are two main types of patents: 

1. Utility patent. For new machines, processes, and formulas. 
2. Design patent. For new designs for machines or processes that already exist.  

“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,” says Pheiffer.

“Patents are property rights, and just as 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. Thinking through claim strategies and how best to draft and amend claims is often best done by a patent attorney. It’s the nature of their business and what they do every day.” 

What a Patent Attorney Does 

In order to practice law, you must pass your state’s bar exam. Having passed the bar, attorneys can practice anything from personal injury law to estate planning. With patents, however, there’s another step lawyers must take: The Patent Bar Exam.

Once an attorney passes this second exam, they are called a “registered patent attorney” and are fully qualified to file patents.  

Technical Knowledge

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. 

How Patent Lawyers Benefit Their Clients

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 

Beyond the basic qualifications to practice patent law discussed above, here are some other things you want to look for in a lawyer: 

• 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 
• Pricing 

There are different ways to gain information about a lawyer. One is to visit their website. Lawyers 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? Then they might use a flat fee. Or are you hiring the lawyer for a complex and open-ended legal project? Then they might use hourly.

It’s important to talk about billing upfront when you meet with a lawyer.

Find a Patent Lawyer 

Visit the Super Lawyers directory to find an experienced patent attorney in your area.