Should You Hire A Patent Lawyer?

Thinking of getting a patent for your invention or idea? If so, you may be trying to decide if you can do it on your own or if you need to hire a patent lawyer. This article will define and outline the duties of a patent lawyer, maybe this information will help you with your decision.

Most patent lawyers serve as "in-house counsel" to corporations. A patent lawyer in a corporate setting generally has one client, the corporation, while a patent lawyer in a private firm often has several clients.

Patent lawyers procurement of the patent begins with the inventor describing his invention. The work of the lawyer is to evaluate the utility, novelty and obviousness of the invention, and based on that evaluation, advises the client as to whether a patent application should be filed on the invention. The evaluation generally consists of an in-depth investigation into the technical field involved, including study of the closest prior patents and references and a comparison with the invention to identify differences.

The evaluation and patent search is a vital part of the process to protect the patent holder from infringing upon someone else's patent and being hit with huge fines.

If the decision is made to apply for a patent, the patent lawyer then drafts a patent application for filing in the USPTO. After the application has been filed in the USPTO, it is assigned to a patent examiner, and the issues surrounding patentability are defined. The patent lawyer seeks to obtain favorable final action for the applicant. If he succeeds, a patent issues on the application, conferring on the patent owner the right to exclude others from making, using and selling the invention in the U.S. for a term which is normally twenty years from the date of filing of the application, unless extended under certain exceptional circumstances. On the other hand, if the examiner decides that the invention is not patentable, the applicant, with the lawyer's assistance, may appeal the decision to the USPTO's Board of Appeals. If the Board's decision is unfavorable, a further appeal may be taken to the U.S. Court of Appeals or the Federal Circuit.

While the application is pending, the applicant and the patent lawyer may become involved in a patent interference proceeding in the USPTO. This proceeding usually involves the determination of priority of inventorship when two or more patent applications claim the same invention. The patent lawyer may also be called upon to file corresponding patent applications in other countries. This is done to increase the area of patent protection for the patent owner if the invention is marketed worldwide. U.S. patent lawyers must have some working knowledge of the various patent laws and procedures in the major industrial nations of the world in order to render sound advice to the client.

After the patent application issues as a patent, the lawyer may then be called upon to investigate and develop licensing opportunities for the patented product or process. This will usually involve drafting and negotiating license agreements that allow others to practice the invention, in exchange for appropriate compensation to the patentee.

This should give you an idea that obtaining a patent is a long and complex process and in most cases should be undertaken with the assistance of a qualified patent lawyer.