Your great idea may be the path to success, but only if you can protect it. The only thing that is harder than being a startup business is figuring out intellectual property law (IP law) on your own. You need to protect your valuable trade secret when you're an inventor with a new, novel, and nonobvious invention or process. Hiring a good patent attorney with years of experience can help you pick the type of patent you need and handle the patent application process.
This article will walk you through determining if you need a patent and how to pick the right patent legal counsel to make that happen.
Patent Law Basics
Patent law is a branch of intellectual property law that deals with new inventions. Traditional patents protect tangible scientific inventions like medical devices, car engines, heating coils, or zippers. Now patents also protect a broader variety of inventions and processes that interest the electrical engineering industry and tech companies. The United States Patent and Trademark Office (USPTO) now grants patents for coding algorithms, business practices, and genetically modified organisms.
There are three types of patents you can file an application for:
Once granted, a patent gives the inventors the exclusive right to their invention for 20 years. This allows the inventor to license their patent to others for a fee. They can also sell or transfer the patent to another.
Is Your Product Worth a Patent Filing?
Patent filing fees are nonrefundable, so you need to make sure your application has a fair chance of approval. Patent application fees range from $150 to $10,500 depending on the type of patent and other factors. Before spending money on a meeting with a patent lawyer, you should see if your invention meets the bare requirements for a patent.
No matter what type of patent you need, your invention must be new, useful, and not obvious (nonobvious). What is eligible for patent protection is up to interpretation. Still, courts try to define what is a nonobvious and new invention. An experienced patent attorney stays up to date on those court cases.
Where To Find a Patent Attorney
Now that you think you should protect your invention, you need to find a patent attorney. Patent attorneys practice in different areas. Some work for the USPTO reviewing patent applications, but you can't hire them. Others work in boutique law firms that only file lawsuits for patent infringement. Many patent attorneys with technical backgrounds like electrical engineering work as in-house company attorneys. Others practice patent law as a part of small business law since patents are essential to many businesses. Some ways to approach finding a patent attorney include:
- If you have a small business attorney, ask them if they work on patent drafting. This is a very specific and complex type of intellectual property law.
- Ask your current attorney if they could give you a referral to someone with years of experience in patents.
- You can search your state bar's member directory for a patent lawyer.
- The USPTO has a patent attorney search page.
- FindLaw's patent attorney directory is a quick and efficient way to find a patent attorney.
Terms To Know Before You Meet With a Patent Lawyer
Legal terms are confusing, but they do not have to be. Review these patent-related legal definitions before you sit down with your patent counsel. This way you can have an idea of what they are talking about and make the most of your meeting with them.
- Application: This is the collection of documents filed with the U.S. Patent and Trademark Office (USPTO) to obtain a patent.
- Claims: This is the section of the patent application that defines the new and nonobvious parts of the invention. It can also define protection for the part of the invention.
- Consultation: This is another word for a meeting with a lawyer. Consultations can be free or cost a fee.
- Counterpart: This is a patent application before the USPTO concerning an invention already patented in another country. Typically, the same person files both patent applications.
- Infringement: Infringement is making or selling a patented device without a license from the patent owner.
- Patent Agent: This is a non-attorney who has approval from the USPTO to file patent applications on behalf of inventors.
- Prior Art: Things that are considered prior art cannot have patent protection. Examiners look at the state of the current industry for that patent to determine what is and is not prior art.
- Patent Litigation: This is the process of defending a patent against infringement. This is where an inventor sues another person who infringes on their patent in federal court.
- Patent Prosecution: This is the process of applying for and receiving a patent with the USPTO.
- Specification: This is a written description of the invention, design, or process you want to patent. It details the design and creation of the invention.
For more terms, review this easy-to-understand patent glossary.
What To Look For in a Registered Patent Attorney
You've got a patentable invention, know patent legal terms, and think you might have an attorney picked out. During your consultation, you need to see if you and the attorney would be a good match. Here are a few questions to ask while you meet for legal advice:
- What law school did they attend? While this is not a deal breaker for most, if you're an LSU Tigers fan, you may not want to work with an Alabama Crimson Tide fan. In all seriousness, you may want someone who attended a law school with a special program in your industry.
- Have they passed the patent bar? An attorney can only file a patent application if they have taken and passed a special exam by the USPTO.
- What is their experience with patent drafting? You can ask how long they've been practicing patent law or how many patents they have filed.
- Have they filed a patent in your industry? If you are looking to patent a plant, you should find an attorney with experience with plant patents. Many patent attorney firms will focus on one industry type since each has its own nuances.
- What is their success rate with the USPTO? An attorney can never guarantee success with the patent office. However, you do want a good patent attorney who has successfully gotten patents for their clients.
- What is their hourly rate? What is their paralegals' hourly rate? Patent attorneys work with complex law, so their hourly rates reflect that. Their invoices should not be a shock to you. Make sure you can budget to afford them.
- Are payment plans available? Some law firms may require you to pay a retainer to use their services upfront. Others may offer payment plans.
- Do you have a contract I can review? You should never feel pressured to sign a contract without first viewing it. You can take it home to read or share with other independent inventors on your team if you need their approval.
Patent Application Process Help
Now that you have hired patent counsel, they can help you from start to finish with the patent application process. Here are some ways they can help you along the way:
- Search for similar patents: Your lawyer will do an extensive patent search before filing your application. They want to make sure your application has the best chance at approval. If they find an existing and current patent that would make a patent examiner reject your application, they may advise you not to file. They may also offer advice on how to tweak your product or process so that it can get approval.
- Craft your specification: Your lawyer will get details from you about your invention or product so they can draft a specification. They may ask you for diagrams, drawings, log books, emails, and anything that can prove you created a new, novel, and nonobvious device, process, or plant. If your invention or process improved on a patent that exists already, then your specification needs to detail that improvement only.
- Determine the type of application to file: Your patent agent will decide if you need to file a provisional patent application or a non-provisional patent application. If you need more time to perfect your invention, your lawyer may recommend a provisional patent.
- Interact with the USPTO: Your attorney will be your point of contact with the Patent Office. Once you file your patent application and pay your fee, a patent examiner must look through your application. Patent examiners work for the USPTO and review patent applications.
- Answer office actions for you: The USPTO will send out official notices called office actions. These letters ask for more information, inform inventors of a deadline, and reject or approve the application. Your lawyer and their staff will keep track of responding to these actions. You can also keep track of your filing status on the USPTO website.
A Patent Attorney Can Help You in Other Areas as Well
Most intellectual property and patent matters overlap with other areas of law. Your patent lawyer may be able to help you with these areas, including:
- Small Business and Corporate Law: Many businesses are formed because someone has a new invention they want to put on the market. These inventors need patent protection before they can sell their ideas.
- International Law: Markets are now global, and inventions need protection across national borders. Each country has its own set of patent laws - some recognize U.S. patents, and some do not.
- Science and Technology Law: Many patents showcase innovations that push tech companies and technology forward.
- Communications Law: Many of the latest patentable inventions involve communications devices.
Other Patent Small Business Resources
Ready To Hire a Patent Lawyer?
Patent filings can make even the smartest inventors feel lost. Make sure to protect your hard work and get an application filed correctly the first time by using a patent lawyer in your area. Put their expertise to work for you and your future success.