Two questions I often hear from inventors are:  “Why should I hire a patent attorney?  Can’t I just file a patent application myself?”  While an inventor can file his or her own patent application with the United States Patent and Trademark Office (“USPTO”), there are many reasons it is in your best interest to hire a patent attorney.  Filing and prosecuting a patent application within the USPTO is a complex legal process that requires knowledge of patent law and an understanding of the underlying technology. 

But isn’t it expensive to involve attorneys?  Many entrepreneurs and startups have a limited budget, so find a patent attorney who will work with your budget concerns.  A company’s  intellectual property can be critical to its success.  Cutting corners early on can have significant and lasting impacts on the business.

In other words, the long-term cost can be much higher if you did not consult an attorney early in the inventive process.

The USPTO recognizes that individual inventors and small business may have questions about the patent process, and they have developed resources on their website to help.  For example, the USPTO has a page for Inventor and Entrepreneur Resources, as well as an Inventors Assistance Center that can answer some general questions regarding the patent examining process.  The USPTO also has a newsletter for the independent inventor community, the Inventors Eye.

However, the USPTO cannot help inventors prepare patent application papers, cannot give you an opinion as to whether your invention is patentable, cannot provide legal advice, cannot provide patent searches.

Here is where a patent attorney can help.  Some reasons to hire a patent attorney include:

Filing strategy.  There are different types of patent applications (provisional, nonprovisional, design).  Within these types of applications, there are numerous requirements for disclosure.  A patent attorney will discuss these options with you and determine the best filing strategy for your situation.

Describing the bounds of your invention in light of your current work, potential modifications that could be made to your ideas, and what others have done in your field.  Your patent attorney can help explore the breadth of your contribution to your technical field and draft your application accordingly.

Deadlines, deadlines, deadlines.  Once you place an application on file, deadlines will come up.  Patent attorneys docket these deadlines so the required documents are timely filed and your application proceeds through the USPTO.

Disclosure limitations.  Your patent application will set limits on what you disclose to third parties.  After filing a patent application, you need to be mindful to only disclose information described in that application.  If you have new improvements or developments, you should consult your attorney to see if an additional patent application should be filed to cover those improvements.

A patent attorney can help inventors protect their ideas so they can focus on taking those ideas to the next level.  Ready to find the right patent attorney for your project?

My next post will discuss tips for hiring a patent attorney.



    Karrie Weaver practices intellectual property, trademark, and patent law. Additionally, she assists nonprofits with their 501(c)3 status.


    February 2017
    January 2017