Patent Attorneys help inventors to draft their patent applications and file them accordingly with authorized bodies. To become a patent attorney, one has to practice the intellectual property work for several years, typically – from 3 to 5. Then the patent practitioner has to pass examination – respectively in his own country or before the regional patent office. Both national and regional representatives have the right to represent inventors before the WIPO.
But what in practice is a patent attorney, and how they are working on a daily basis? What is the business model behind patent agencies? How does it compare to the regular attorneys at law? What are the differences of patent agents and attorneys in US and Europe? Let’s discuss these questions in this chapter.
Patent attorneys, just like the regular attorneys at law have representation rights. Attorneys at law have the right and skills to represent businesses and natural persons before courts and defend their rights, while patent attorneys unless they are attorneys at law also, have the right to file patent/design/trademark applications before patent office, file oppositions and communicate with the patent examiners during patent examination stage.
Patent Attorney and Patent Agent means basically the same, just the first one is more common title in Europe and the latter one is mostly used in United States. There is also a third title – Patent Lawyer, which is mostly used for patent attorneys, which are also attorneys at law and can represent inventors both before the patent office and in court.
Lawyer background or engineering background
People having background in law or people having background in technical areas, both can become patent attorneys. Suitable technical areas include physics, mechanics, electronics, computer science, etc. or other engineering sciences background, like chemistry, biology, biophysics, etc.
Differences between lawyers and engineers are more than obvious. In their practice, pure Lawyers usually limit their activities to trademark and industrial design registrations, because their knowledge and terminology in technical areas are rather limited. Five years ago myself being a freshly graduated Physicist could not properly understand, what the guys from a laser company where talking about. Indepth knowledge of lasers was not in my disposition. What can we say about pure lawyers? Most often they barely understand most simple mechanical inventions. This is where patent draftsman comes to help.
The other way, what pure lawyers tend to do – is to hire some engineers in the positions of patent consultants. Patent consultants do not file papers before the patent office and do not participate in oral proceedings, but the rest of the work, including patent search, patent specification and claim drafting, preparation of technical drawings, preparation of arguments and change of claims in order to respond to expert opinion during official action – all that is done by said patent consultants. Actually that was my case also. So during some years of practice, patent consultants become the key persons in performing the patent work at patent agencies.
Here are some tips for inventors, searching for a patent agent:
- Look at the education of the patent attorney – if he or she does not have engineering degree, ask, who will be writing the patent for you
- If patent agent has an engineering background, make sure, the patent attorney still manages to understand the technical things
- Some patent attorneys, who are not capable understanding technical things, do not participate in conversations with an inventor at all. They send the patent consultant. Don’t be afraid of that – this is for good sake.
- When discussing to patent attorney or the consultant, make shure, he understands the topic at once. If he or she does not have a clue, be carefull and consider contacting another patent agent/consultant
- Never blindly trust the terminology, which the patent attorney uses in your patent description; always double-check that and propose corrections. There is not ‘patent’ and ‘other technical’ terminologies; the patent language should include the most common terms, which are otherwise used in the field.
- If possible, read the patents found in the preliminary search by yourself, don’t always trust conclusions of the patent attorney/consultant. The attorney has to give you straight explanation, why he decided to encourage you to patent. Otherwise you might suspect, that the consultant is not honest and just seeks another order for patenting.
- If you decide to entrust the patent agent to file your application and make the whole prosecution, inquire, what databases and tracking means he uses in order not to miss certain due dates. One skipped due date can bring the patent to withdrawal without any possibility to restore or file anew. Seriously working patent agencies must have dedicated database software with messaging service, document copies and reliable due date tracking. No Microsoft Excel type databases are allowable in this case!!!
When to use Patent Agent services?
Patent Attorney service is to be used when the inventor or a company does not want to carry out any patent prosecution related activities. If a person or a company wants to make some actions by themselves, he should make sure, that he will manage to track deadlines and handle paper work. Choosing to use services of a professional representative is always optional. Now many patent offices allow filing a patent application online, thus making it at home becomes much easier than before. In that sense, necessity of a patent agent becomes questionable. Filing a patent application by himself, the inventor might save from 200-1000 EUR at the very first step, depending on country. In another chapter I will explain how to do that.
Me and my coworkers are not patent attorneys. It is our conscious resolve, because our target is not representation of inventors before patent offices, but we purely focus on technical writing and drafting of patent descriptions and claims. Our aim is to help patent agencies in western European countries and US to reduce their cost and lead time of a patent drafting work. In other words, we are here to carry on outsourced patent writing work for big patent agencies.
Also we provide services directly to individual inventors having limited budget, but willing to receive top quality services.
Specifically our service is best value for companies from photonics industry, such as laser developers, solar cell and LED producers, microfluidics and sensors developers, laser based analysis tools developers, etc.
Find more about our services here.
Discover the favorable pricing here.
Read more about myself here.