SCENARIO: You have a unique idea and need to get a patent to protect it. Your advisors have told you a patent will allow you to obtain monopoly rights for the invention.
A patent is the offering of a property right to an inventor. This grant confers to the inventor exclusive rights to a particular invention, design, or process. Inventions that fall outside these categories are not patentable. Generally, any invention should be kept confidential until it is patent pending.
The patent system is designed to encourage innovation by giving the inventor rights over the idea in exchange for that inventor sharing the knowledge of the invention with the world. Patents are not just abstract concepts; they can lead to substantial profit for the inventor and change the world in profound ways.
However, the patent system can be complicated because there are different types of patents and multiple ways an invention can be protected. Many inventors ask, “is there a patent attorney near me to help me file a patent application?” Below we discuss what is true and what is false regarding the help a patent attorney can provide small business owners and inventors.
FALSE: A Patent Agent and a Patent Attorney Are The Same
Patent agents work with inventors, researchers, and attorneys to evaluate an invention, draft applications, and write patent claims. Their work also involves conducting examiner interviews and drafting and filing amendments and responses. A qualified patent agent must pass the US Patent and Trademark Office‘s Patent Agent exam. Generally, like a patent attorney, a patent agent can assist an inventor in filing and prosecuting a patent application in front of the USPTO. However, a patent agent is not a lawyer and cannot provide any legal advice including, for example, license agreements and infringement actions.
A patent attorney is a lawyer who has also taken the USPTO’s Agent exam. While the patent agent and patent attorney each hold undergraduate degrees, only the patent attorney also attended law school and studied case law associated with intellectual property law. Patent attorneys are “lawyer-scientists” who are skilled at not only prosecuting an invention in front of the USPTO but can also advise a client on the bigger picture including licensing, infringement actions, the sending of cease and desist letters, and the like. Moreover, a patent attorney will typically have a good understanding of copyright and trademark law, which cannot be practiced by a patent agent, to ensure that the inventor/entrepreneur is completely protected from all angles.
You may ask, “what does a patent attorney near me need to know in order to help me?” Most patent attorneys are well versed in a variety of technologies though some, such as biochemists, often work in a very well defined area of expertise. That being said, you should ask your patent attorney what types of inventions they have worked on to ensure that the patent attorney can properly write your patent application in a manner that is not easily circumvented by your competitors.
TRUE: A Patent Attorney Near Me Will Help Conduct a Patent Search
You cannot patent something unless it is novel. The legal definition of this of course enters some gray areas and can be the subject of debate, but typically it is said that an invention is novel if it is new and non-obvious with respect to all other public disclosures. Before you spend a lot of time, money, and energy on your project, you should have a search conducted to sift through the millions of publications to assess your invention’s uniqueness.
A patent search is a process of locating the most relevant prior art – that is publications that are similar to your idea. Patent searches are critically important. Your patent lawyer will conduct a prior art search and then try to distinguish your invention from the prior art.
FALSE: A Patent Attorney Cannot Provide Guidance On How to Make the Most of A Pending Patent Application
Inventors and competitors often misunderstand ‘Patent Pending.’ The term means that you have taken steps to protect your invention to eventually obtain a non-provisional patent. This specifically means that your application, either a non-provisional application or a provisional application, has been filed with the USPTO.
According to the USPTO, the term ‘Patent Pending’ carries no legal consequence. However, it warns competitors that they could be held liable for damages once a patent is issued. You can use your pending status to make, sell, and license the product during this time, and if you are not at least patent pending you have little legal standing for licensing your invention. This is where consulting with a patent attorney would help.
TRUE: A Patent Attorney Near Me Will Assist With A Utility Patent Application
A utility patent covers a new or improved machine, process, or product. It is among the most valuable forms of intellectual property because it can provide protection for the way an object works, is used, and constructed. Utility patents are valid for a period not exceeding 20 years.
FALSE: A Patent Attorney Cannot Identify Patent Infringement
Patent infringement refers to the violation of your patent rights with respect to your invention. It occurs when another party makes, uses, or sells your patented item, within the United States, without your permission.
In some cases, you can get an injunction to stop the infringing behavior, but the infringer can argue that their alleged infringement is not covered by the claims of an issued patent. A patent attorney will evaluate your claims against the actions of the accused infringer to determine if a cause for infringement exists.
TRUE: A Patent Attorney Near Me Is Effective When It Comes to Patent Prosecution
Patent prosecution is the process of writing and filing a patent application and the subsequent arguments that are engaged in between the USPTO Patent Examiner and your patent attorney. Prosecution is the act of attempting to obtain an issued patent while patent litigation involves already issued patents.
It is generally the task of the Patent Examiner to make certain that you do not obtain more protection than is warranted. To that end, during patent prosecution, Patent Examiners tend to read a patent application very broadly and therefore almost always reject the application at the first stage, or office action. Subsequent office actions fine-tune the claims to a point where the Patent Examiner hopefully agrees that some or all of the claims are allowable and that a patent may be issued.
The prosecution becomes the “history” of the issued patent and it is important that you have a patent attorney in your corner who understands how to coherently argue on your behalf in a manner that provides you with truly significant and enforceable claims issued at the least expense.
Hire the Right Patent Attorney Near You
Most patent attorneys specialize in either patent prosecution or patent litigation. It would be best if you had a patent attorney near you who understands a particular area of patent law. Kaufhold & Dix Patent Law works hard to help inventors and business owners protect their intellectual property with flat-fee patent, trademark, and copyright services.