A patent attorney handles the technical and legal work of securing your invention's protection, from searching prior art to drafting claims and communicating with the USPTO on your behalf. Here is what that work actually involves and why it matters for your invention.
You have a great invention and you know you want to visit an intellectual property practice to patent your idea. You’re ready to discuss your invention with a patent attorney but you don’t know what they can do for you. When you want to get your idea patented, here’s the role of your patent attorney.
Consulting
When you meet with your patent attorney at an intellectual property practice, it’s the job of your attorney to determine whether or not your invention is worthy of a patent.
A good patent attorney will explain the necessary qualifications. There are four major qualifications: it has to be a process, machine, material, product, or an improvement on a previous invention; it needs to be purposeful; it has to be novel, and it must be new.
Preparation
Patent attorneys are trained in a specialized area of the law. They have to go through rigorous training to become a lawyer in their field and the laws are constantly changing. Your patent lawyer simply knows the ins and outs of patent law that other lawyers don’t.
As such, they can help you document your invention and prepare you for filing the patent application. They will also help you obtain the patent and register it if the application is accepted.
Representation
When your invention is approved by the patent lawyer, your attorney will act as your legal representation during the application process. Additionally, they can also serve as litigators in the event your rights aren’t being protected in the patent.
You can always fill out the patent application yourself, but you may not have all your rights protected without the backing of a patent attorney.
Your patent lawyer will also handle any necessary cancellations and help you with any third-party disputes against your patent.
Keep in mind that everything can’t be patented. Your patent attorney will determine if your invention meets the sufficient level of qualifications, though most new inventions are able to receive a provisional patent application. When you’re looking for the best patent attorney, be sure to know what the essential questions to ask when hiring a patent attorney to get your idea patented.
Ready to talk through your options? Schedule a free consultation and get straightforward guidance on your next step.
Patent attorney, patent agent, or a filing service
Three kinds of people will offer to file your patent, and the differences decide what you can do later. A patent agent has passed the USPTO registration exam and can prepare and prosecute applications, but is not a lawyer: an agent cannot advise on infringement, draft a license, or represent you in court. A patent attorney has passed the same USPTO exam and is also a licensed lawyer, so the same person can write the claims, argue with the examiner, negotiate the license, and try the case. A filing service is neither. It fills in forms from what you type, and whatever the forms say is what you own. At Leavitt and Eldredge, Richard Eldredge is registered before the USPTO to prosecute patents and Brandon Leavitt is the firm's litigator. Both are licensed by the State Bar of Texas.
Why the claims are the whole job
A patent does not protect your invention. It protects what the claims say, and nothing else. A claim written too narrowly lets a competitor change one detail and sell the same product. A claim written too broadly is rejected over prior art, or issues and is later invalidated in court. The skill you are paying for is a claim set wide enough to stop the copy that will actually be made and narrow enough to survive the examiner and a judge. That is legal drafting informed by engineering, which is why Richard Eldredge, a licensed professional engineer as well as an attorney, prepares the technical drawings for the firm's applications himself instead of sending them to a vendor.
What a patent attorney costs
Our fees are flat and quoted in writing before any work starts. That holds for a provisional application, a nonprovisional application (the one the USPTO examines and the one that can issue as a patent), and a design patent. Each fee includes the patent search, drafting, illustrator and filing clerk fees, attorney time, and the USPTO filing fee for one application. Responses to office actions are quoted separately when they arise, because their scope depends on what the examiner says. The full schedule is on the costs and fees page, and the search-to-issue timeline is on our how to file a patent application guide.
What the attorney does after the patent issues
Issue is the midpoint, not the end. Maintenance fees fall due at three and a half, seven and a half, and eleven and a half years, and a missed fee lets the patent lapse. A competitor's product has to be compared against the claims to decide whether it infringes. A license has to be drafted if you would rather be paid than sue. And if the patent is challenged, in court or at the Patent Trial and Appeal Board, the same attorney who wrote the claims is the best person to defend them. Brandon Leavitt, the firm's lead litigator, is admitted in all four Texas federal district courts and has argued before the Court of Appeals for the Federal Circuit, which hears every patent appeal in the country.
Five questions to ask before you hire one
- Are you registered before the USPTO, and are you also a licensed attorney?
- Who writes the claims, and who prepares the drawings?
- Is the fee flat and in writing, and what does it exclude?
- What happens when the examiner rejects the application, and what does that cost?
- If a competitor copies the invention, will you handle the enforcement, or refer it out?
A firm that answers all five plainly is one you can budget around. A free consultation with one of our attorneys is the place to ask them: call 844-728-3680.