Choosing a patent attorney

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Anyone serious about getting a patent should consult with a patent attorney or patent agent before filing a patent application. A patent application is basically a proposed contract with the government requesting a monopoly on a certain invention and, when granted, the patent becomes an enforceable contract. As with any contract, anything said in the patent may legally affect the validity of the patent. Often, an independent inventor will not know what should and shouldn’t be written in a patent application. An inventor can represent himself before the U.S. Patent Office, but unless he understands all of the laws and procedures in the patent office he is running a risk. The wisest option for an inventor is to consult with a patent agent or attorney before he files a patent application.

A patent attorney or agent may advise an inventor on the best strategy to obtain a patent on his or her idea. The attorney or agent may also file the inventor’s patent application for him. In order for them to do so, the inventor needs to give him power of attorney. In such cases, anything that the attorney/agent says in correspondence with the patent office before and after a patent application is granted can also be legally binding on the patent. For that matter, anything that the inventor says about the patent in official correspondence with the patent office can also be legally binding on the patent. One way to make sure that an inventor does not mischaracterize his invention is to allow a patent agent or attorney to do all of the correspondence with the patent office.

Patent Agent vs. Patent Attorney – A patent agent is a non-attorney with a technical background who has passed a bar established by the U.S. Patent Office allowing the agent to represent individuals other than himself before the Patent Office. An agent can assist an inventor in obtaining a patent, but that is the extent of his authority. A patent attorney, on the other hand, must also have a technical background, has to pass the same bar that the patent agent does, and has to be a member of one of the state bars. Not only can a patent attorney help an inventor prepare and file a patent application, but the attorney can also help the inventor draft license agreements, represent the inventor before a U.S. court, and may give his opinion on what may constitute infringement for particular granted patents. The benefit of using a patent agent over an attorney is that a patent agent will typically charge less for their services than an attorney would. Only patent agents and patent attorneys are qualified to represent others before the U.S. Patent Office.

Checklist for attorney visit – Some attorneys work for a set fee while others charge clients by the hour. In either case, an inventor will want to have a productive visit with his attorney. During the visit, the attorney will need to collect quite a bit of information from the inventor. Below is a checklist of some of the information that the attorney may be interested in. Being prepared with this information will make the visit with the attorney more productive and may save some money for the inventor.

Title of the invention
Brief written description of the invention
Detailed written description of the invention
Descriptive drawings/figures of the invention
Date that the invention was conceived
Name(s) of the inventor(s) and their contribution
Prototype, pictures and/or video of the prototype
Description of background technology

Answers to the following questions will also be helpful for the attorney:

How was the idea conceived?
Where was the idea conceived
Do the rights to the invention belong to another party beside the inventor(s)?
Are there discussions with a third party for a license?
What is the most likely industry that could benefit from the invention?
What other industries could benefit from the invention?
Has any part of the invention been published on a website, magazine, newsletter, advertisement, etc.?
Has any part of the invention been sold or been offered for sale?
Who knows about the invention?

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