After enormous effort, including a steady stream of naysayers telling you that your idea is impossible, you have put together a working prototype. Before approaching investors, you need to protect your intellectual property. It’s a million-dollar idea, but you are on a garage inventor budget. Do you have to spend your limited resources on a patent lawyer to protect your invention? Before you decide, there are a couple of points to consider.
What is a Patent Attorney?
Not every lawyer can file a patent. To file a patent application, a lawyer must pass a specialised test called the patent bar and be registered with the patent office. To qualify to take the test, the lawyer must be able to prove skill in a technical field. Accordingly, patent lawyers are programmers, scientists, engineers, or technicians that have gone to law school and passed not only a state bar exam but also the patent bar.
A patent attorney is an expert in patent law and often an expert in the specialised patent law surrounding specific technical areas. Often, patent attorneys specialise; i.e., a pharmaceutical firm uses different patent lawyers than a software studio.
Having an expert understanding of a particular area of patent law can be enormously valuable. A lawyer that has dedicated a career to getting patents on inventions in telecommunications will know how to write a cell phone company’s patent, anticipate the patent office’s rejections, and use the law to get you your patent.
Do I Need A Patent Attorney To Apply For A Patent?
You do not need a patent attorney to apply for a patent. As an investor, you can submit a patent for your own invention on your own behalf. But is that a good idea?
Writing a patent is very difficult. Not only do you have to convey the technical details of your invention, but you also have to protect your million-dollar idea. Patent law is a highly technical legal field dealing with highly technical subjects. Even if your invention is technically simple, writing a patent yourself can be very risky.
For example, you may build your prototype entirely out of 3D-printed thermoplastic. You could easily use other kinds of 3D printing materials, but unless you specifically say so, the patent office may only let you patent prototypes made out of 3D-printed thermoplastic. There are dozens of other omissions or oversights that can dramatically limit what you can patent.
Alternatively, you can write and submit your own provisional patent application. Provisional applications give you a one-year window to write a formal patent application. Provisional applications lack many of the formalities that patent applications include. The provisional application allows you to present to investors with a patent in hand. You can wait until you have their investment before paying a patent lawyer to draft the non-provisional application. However, keep in mind that the contents of the provisional application can limit the protection that you eventually receive for your invention.
How Do I Find A Patent Attorney?
Our firm – The Law Offices of Konrad Sherinian, LLC – is a great place to start your search. We have a number of skilled attorneys that have been very successful in obtaining different kinds of patents. Our attorneys meet with inventors every day, and if you are not local to the Chicago area, we also offer reasonably priced video consultations.
If one of our attorneys is not a good match for your invention, there are more online tools for inventors now than ever before, making a patent attorney search easy. Google allows you to search every issued and pending patent at the patent office. Every issued patent or patent application lists the lawyer who wrote it and the firm the lawyer works for. Start searching for lawyers that write patents in the technical field of your invention.
Look at the claims of the patent. In United States patents, the claims are a numbered list of sentences at the end of the document. The value of most patents comes from their claims, so find lawyers that get broad claims that contain specific, meaningful language. Feel free to call inventors (or companies) that use the patent lawyer and ask if they would recommend the lawyer.
Call the patent lawyer and have a frank conversation. If you are worried about cost, ask to have a cap in place before the lawyer does work. If you are concerned that the lawyer lacks the training to understand your invention, quiz the lawyer. You are the expert on your invention—find the expert on your patent.
To wrap up, you do not need a patent lawyer to file a patent, but it is almost always a good idea.