Do You Need a Lawyer to File a Patent?

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

Do you need an attorney to register your patent? Not necessarily. It depends on several factors, including the complexity of the invention, the possibility that your patent will be challenged, and the time that you have to commit to the sometimes-complex registration process.

Key Terminology

The world of patents features many terms that may be new to you. Here are just a few critical pieces of terminology:

  • 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: A 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 a patent application (or provisional patent application) without a lawyer. Indeed, thousands of inventors have done so using self-help guides such as Nolo’s Patent It Yourself, Patent 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. 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.

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 concern 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, imagine that 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 USPTO and participate in a revision of the application. But she cannot advise Derrick 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 can offer legal advice, as well as communicate with USPTO representatives.

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. What does the process involve?

  • 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 ten 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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