Do I Need a Patent Attorney?

After months of endless work and moonlighting, you get your “aha moment”—your invention works! In today’s fiercely competitive market, your million-dollar invention can get copied in no time. As a business owner or inventor, getting legal protection for your creation or technology should be your utmost priority. 

Securing a patent is a tricky and arduous process with a high rejection rate of about 50%. It can leave even the most determined feeling lost. A patent attorney can be a trusted ally to advise you and protect all the effort and hours you logged in on your invention.  

Don’t let your innovation fall prey to copycats. Learn how hiring a licensed patent attorney can navigate the daunting process and even save you a lot of money down the road.

What is a patent attorney? 

A patent attorney is an expert in patent law with extensive knowledge of U.S. patent procedures and federal rules and regulations that govern patents. Patent attorneys work side-by-side with solo inventors, researchers, and even large corporations to ensure their inventions are translated into strong patent applications that are easily granted. 

Patent attorneys are highly qualified professionals with a blend of technical and legal expertise. They have: 

• A law degree
• A bachelor's degree in a technical field or "hard science" like chemistry, biology, biotechnology, biochemistry, computer science, physics, or engineering
• A license from the United States Patent and Trademark Office
• Passed the state bar examination
• Passed the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office (USPTO)

It's common for patent attorneys to have master's or doctoral degrees in their respective fields. Also, patent attorneys are qualified to practice law just as any other lawyer.

What does a patent attorney do?

A patent attorney’s primary focus is patent prosecution, a process that involves filing patent applications. They are also skilled at representing clients in patent-related matters like infringement, licensing, and re-examination.

Some of the other tasks patent attorneys perform are: 

1. Determining whether clients' inventions are patentable
2. Drafting and submitting all documents, including technical drawings
3. Performing a global search of existing patents to understand infringement conflicts
4. Communicating with patent examiners

Difference between a patent attorney and an intellectual property lawyer

The best way to understand the difference between a patent attorney and an intellectual property lawyer is to think of intellectual property as an umbrella with a broader scope. Intellectual property lawyers can advise you on various legal matters like intellectual property rights, trademarks, copyrights, and licensing. Patent attorneys fall within that broader umbrella but only specialize in patents. To be a patent attorney, one must pass the USPTO registration exam, commonly referred to as the “patent bar exam,” and get a license from the patent office.

Intellectual property attorneys who aren't registered as patent attorneys with the USPTO can't represent a client on patent cases before the patent office. They also can’t file a patent application. They can, however, represent clients and prosecute patent applications and litigation cases before a civil court.

Difference between patent attorneys and patent agents

It’s easy to assume that a patent attorney is the same as a patent agent. There’s some overlap between the two, but they aren’t the same. A patent agent is also an expert on patent law, has passed the USPTO registration examination, and can draft patent applications before the USPTO. 

But here's the difference: They haven't attended law school, nor have they taken the state’s bar exam. Therefore, they aren’t licensed to practice law or give legal tips on matters that fall outside the boundaries laid by the USPTO, such as patent licensing or non-disclosure agreements. Patent agents also can't resolve legal disputes like patent infringement.

One advantage of working with a patent agent over a patent attorney is that an agent is registered at a federal level with the U.S. Patent and Trademark Office and, therefore, isn't restricted to practice in a one-state jurisdiction like an attorney.

Why you need a patent attorney: top benefits

Suppose you are an inventor or small business owner with the latest ground-breaking technology and want to protect your intellectual property rights. We recommend you hire a patent attorney. Having an expert with an understanding of a particular area of patent law is enormously valuable, and we dive into the specifics of how a patent lawyer can help you:

Provide knowledge on patent law

Patent law is a highly technical legal field, and filings are complex and time-consuming, as there is a wide array of rules and formalities that one has to be familiar with. Even drafting a quality patent application takes a lot of time for experienced patent agents because it involves an exact process. A patent attorney knows all the legal requirements in order to prosecute a regular patent application.

Advise on technical aspects

Patent agents have a bachelor's degree in the sciences or engineering, which gives them greater technical expertise. This makes it easier for them to understand your invention and assess its patentability. Patent attorneys can also guide inventors on what patents their creations might be eligible for and whether they should apply for more than one patent.

For example, you have developed a new bicycle wheel prototype that increases shock absorption. A patent attorney with an engineering background can explain the detailed features that differentiate your invention from previous patents. They can also suggest wording and technical drawings that will help the patent office understand your case. Without an attorney, you might miss mentioning the materials used in the design and such technical oversights that can dramatically limit what you can patent.

Smooth the complex patent application process

The patent application process is a challenging, multi-step process that can take two to three years. It requires technical aptitude and knowledge of USPTO's strict rules and deadlines. Even if your invention is technically simple, writing a patent yourself can be very risky, and missing any deadline can set your application back in the line. 

A patent attorney will draft the application and file the correct form on your behalf in a way that will maximize your chances of approval. They will also handle any office notices or queries from patent examiners. Patent attorneys ease your burden and save you time so you can focus on what you do best: inventing something new or running your business stress-free.

Also, if you intend to get your patent approved in other countries, a patent attorney can help you better prepare to meet international patent application standards.

Enforce patent rights

A patent attorney can also serve as a watchguard. They help you set up a system that will help you monitor any patent infringement cases. If such a case does come to light, like someone  using the same shoe design you have a patent for, the attorney can assess the infringing product to see if you have the right to claim the patent. 

Manage patent litigation

Nobody likes lawsuits, but if you do encounter a scenario where you need to defend your patent rights and prevent the unauthorized use of your technology, a patent attorney is someone you'd want in your corner. Patent attorneys can help you craft a litigation strategy, gather evidence to support your case, and even legally argue your case in front of a civil court.

How to find a patent lawyer

There are multiple ways to find a reputable patent lawyer, and online search engines such as Google have made it much easier to identify who is at the top in their fields regarding patent law. Here are some good ways to find experienced patent attorneys that suit your needs and budgets. 

• Ask family members or friends: Family and friends can be a good starting point for getting recommendations. 
• Network other small business owners: You can also reach out to other experienced business owners and get their referrals on patent attorneys. If you have yet to start a business, don’t be shy about attending your local SCORE group’s meetup or visiting the Small Business Development Center (SBDC) to get recommendations. 
• Use the USPTO Patent Practitioner directory: The USPTO online directory stores a wealth of helpful information about active patent attorneys and agents registered with the patent office, such as location and contact details. The search field also allows for filtering of results to find registered patent attorneys who are currently accepting new clients. 
• Search state bar directory: It’s advisable to use your state bar’s member directory to find a patent attorney with a license to practice in your local area. The state directory only lists attorneys in good standing and typically provides insight into years of practice and areas of expertise. 
• Utilize online lawyer directories: Multiple online lawyer directories like LegalZoom make it easier to find qualified attorneys in your area. Many of these online services give you access to a patent attorney for a flat and affordable fee. 
• Contact intellectual property law firms: Another effective way to find a patent lawyer or agent is to call intellectual property firms in your area. Ask if they have a registered attorney or patent agent in their practice who can help you draft patent applications and complete the filing process on your behalf.

Just finding a patent lawyer isn’t a done deal. Call the patent lawyer and have a frank conversation about your case and concerns. Ask your patent attorney these essential questions before making your final decision. You are the expert on your invention—find the expert on your patent. 

FAQs about patent attorneys

How much does a patent attorney cost? 

Patent lawyers typically charge an hourly billing rate between $300 to $400. The cost varies based on location, the lawyer's expertise, and invention complexity. LegalZoom can help you file a provisional patent application for a flat rate of $199 + filing fees. 

Do I need a patent attorney to apply for a patent?

No, you don’t need to hire a patent attorney. You can do the patent application for a United States Patent yourself, but remember that writing patent applications is a specialized skill, and there is a 50% rejection rate. So, the question becomes,  “Do you completely understand the complex U.S. patent system and the governing rules set forth by the United States Patent Office?” Hiring a patent lawyer can increase your odds of success and safeguard your invention from challenges. 

What is patent infringement? 

Patent infringement is when somebody makes, uses, or sells a patented product without permission. Sometimes, even using or importing a component of a patented product can be considered an infringement. An experienced patent lawyer can help identify infringement, send a cease-and-desist letter, or file a lawsuit.