Do You Need a Lawyer to File a Patent Application With the USPTO?

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

An inventor who wants patent protection must apply to the U.S. Patent and Trademark Office ("USPTO") in order to obtain it. That application process can be complex. But do you need an attorney to register your patent? Not necessarily.

The decision of whether to hire an attorney depends on several factors, including the complexity of the invention, the possibility that your patent will be challenged, and the time that you personally have to commit to the sometimes-involved registration process.

Key Terms to Know Before Registering a Patent

The world of patents features many terms that may be new to you as an inventor. Here are just a few critical pieces of terminology that will help you proceed:

  • Patent agent: A non-attorney certified to prepare and prosecute patent applications.
  • Patent attorney: An attorney who is formally licensed by the USPTO (commonly known as the "patent bar") to prepare and prosecute patent applications and perform legal tasks.
  • Patent prosecution: A process by which the inventor or patent practitioner guides the application through the USPTO, including when the USPTO patent examiners possibly challenge the validity of the patent.
  • Provisional Patent Application ("PPA"): A short, informal document containing text and drawings that describe how to make and use an invention; establish an effective filing date for an invention; and enable an applicant to use the term "patent pending" on the invention. The PPA expires unless a regular patent application is filed within one year of having filed the PPA.

Should You Hire a Patent Attorney?

Legally speaking, nothing prevents an inventor from preparing a patent application (or provisional patent application) without a lawyer. Indeed, thousands of inventors regularly do so, using self-help guides such as Nolo’s Patent It Yourself, Patent Pending in 24 Hours or Online Provisional Patent Application process.

Filing a patent application without an attorney definitely saves a great deal of money. Depending on the type of patent and the complexity of the issues, a patent attorney can cost a minimum of $5,000 to $10,000. To the extent that your patent is more complicated, or the USPTO patent examiners raise concerns about any aspect of the application, the costs of the legal feels could be significantly higher.

Despite these cost savings, when it comes to filing a patent application, many 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 concern over properly protecting invention rights: The prosecution process is complex and requires considerable research; and the patent application must be written in a somewhat dense style and format.

Among the tasks required in this process are:

  • ascertaining the patentability of an invention, including a showing that it is useful, innovative, 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
  • dealing with USPTO examiners during the application examination process.

Choosing Between a Patent Attorney and a Patent Agent

As you might have noticed on the terminology list above, patent attorneys aren't your only choice for professional help. There is also what's called a "patent agent," a non-attorney whose fees are typically lower than an attorney would charge.

Both patent agents and patent attorneys must go through a certification process with the USPTO. The purpose is to ensure that the attorney or agent can converse with the inventor in the technical language of the invention in the course of representing that person.

Patent agents, however, cannot represent you in litigation or perform any activity amounting to the practice of law.

Imagine, for instance, that Betsy is a patent agent who represents Tony. She can prepare and file his patent application. She can respond to letters from the examiners at the USPTO and participate in a revision of the application. But she cannot advise Tony as to the legal consequences of his ownership of the invention (for instance, in a divorce or for purposes of making a will).

Patent attorneys, by contrast, can offer legal advice as well as communicate with USPTO representatives. The choice might depend on both cost and the type of services you need.

Doing It Yourself

With all of the above in mind, it is still possible to file your own PPA and your own regular ("full") patent application.

Of the two, the PPA is far easier to file by yourself because it is generally shorter and less formal. However, despite its informality, the PPA must still properly describe how to make and use your invention. What will the process require of you?

  • Time. The process takes many hours of research and reading (you will 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 present information clearly and yet you must also use a somewhat arcane terminology, with technical and legal terms, to make your application acceptable to the USPTO's patent examiners.
  • Project management skills. You must be able to carefully manage a complex project from start to finish and meet deadlines. For example, you must file your patent application within a year of the first public sale. Like a "real" lawyer, you must be prepared to follow strict rules and deadlines as established by the USPTO.

Drafting a Provisional Patent Application

As discussed earlier, filing a PPA is far easier than filing a regular patent application. PPAs are usually less than ten pages long and written in an informal style.

Academic or technical journal articles are often sufficient for submission, 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 draftsperson, usually at a rate of $50-$100 per drawing.

Despite the costs, utilizing a patent attorney, even for a PPA, can provide security and protection. Often the cost is outweighed by the counsel and advice provided by a professional.

The decision is ultimately a personal one. Do you have the financial resources for legal counsel? How much of your own time can you devote to obtaining an application (and dealing with a large government agency)? How critical is the patent to your business? Answering these questions will guide you toward the right answer for your individual circumstances.

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