Do You Need a Lawyer to File a Patent?

Most inventors prefer to use the services of a certified patent specialist

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Some key terms used in this article:

  • patent agent - a non-attorney certified to prepare and prosecute patent applications.
  • patent attorney - an attorney, certified by the PTO to prepare and prosecute applications and perform legal tasks.
  • prosecution - process by which inventor or patent practitioner guides the application through the U.S. Patent and Trademark Office (USPTO).
  • provisional patent application (PPA) - a short, informal document containing text and drawings that describes how to make and use an invention and that establishes an effective filing date for an invention and enables an applicant to use the term patent pending on the invention. The PPA expires unless a regular patent application is filed within a year of filing the PPA.

Should You Hire a Patent Attorney?

An inventor is free to prepare his or her own patent application  (or provisional patent application) and thousands of inventors have done so using self-help guides such as Nolo’s Patent It YourselfPatent Pending in 24 Hours or Nolo’s Online Provisional Patent Application process. Filing an application without an attorney also saves a great deal of money (often $5,000 to $10,000).

Despite the savings, when it comes to filing a patent application, most inventors prefer to use the services of a certified patent specialist with a scientific or technical background. The primary reason that inventors use attorneys to prepare and prosecute their documentation is over concernt about properly protecting invention rights -- the prosecution process is complex, requires considerable research, and the patent application must be written in an arcane style and format. Among the tasks required are:

  • ascertaining the patentability of an item, including usefulness, innovativeness, novel, and non-obvious
  • creating, documenting, and filing all applicable application documents, including descriptions, claims, drawings, and other forms
  • performing patent research, both in the United States and in foreign countries, regarding the existence of potential patent infringements
  • filing the regular or provisional patent application
  • paying applicable patent application fees, and
  • with USPTO examiners during the application examination process

Patent Attorneys and Agents

 In order to represent an inventor, an attorney or agent must be able to converse with the inventor in the technical language of the invention. For this reason, the USPTO has established a certification process for patent attorneys and patent agents. Patent agents cannot represent parties in litigation or perform any activity amounting to the practice of law. For example, Sienna is a patent agent who represents Derrick. She can prepare and file his patent application. She can respond to letters from the examiners at the Patent and Trademark Office and participate in a revision of the application. But she cannot advise Derrick as to the legal consequences of his ownership of the invention (e.g., in a divorce or for purposes of making a will). 

Doing it Yourself

It’s possible to file your own provisional patent application (PPA) and your own regular patent application. Of the two, the PPA is far easier to file by yourself. However, despite its informality, the PPA must still properly describe how to make and use your invention.

  • Time. The process takes many hours of research and reading (you have to check for preexisting inventions) and considerable time to write and create drawings. Expect to spend a few hundred hours on one application.
  • Writing. You need strong writing skills because you must write clearly and yet you must also use an arcane terminology.
  • Project management skills. You must be able to carefully manage a complex project from start to finish and at the same time, you must meet deadlines—for example, you must file your patent application within a year of the first public sale.

Drafting a Provisional Patent Application

 Filing a provisional patent application is far easier than filing a regular patent application. It’s usually less than 10 pages and written in an informal style. Academic or technical journal articles are often sufficient provided the document describes how to make and use the invention. The drawings that accompany a PPA may also be informal, although you can hire a patent drafts person, usually at a rate of $50-$100 per drawing.

Despite the costs, utilizing a Patent attorney can provide security and protection, and often the cost is outweighed by the counsel and advice provided by a professional.

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