When Do I Need a Patent Lawyer?

How a Patent Lawyer Can Help You
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You have a great idea for a product and you want to patent it. You may have read that you can file a patent yourself online or through a filing service. But before you do that, you need to understand the importance of having a patent lawyer help you file your patent application. 

The U.S. Patent and Trademark Office (USPTO) says: 

Inventors may prepare their own applications and file them in the USPTO and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may get into considerable difficulty.

In this situation, you will need a patent lawyer if you want to improve your chances of getting your patent application accepted. 

Patent Process 

The patent process is conducted under the U.S. Patent and Trademark Office (USPTO), which regulates the process and grants patents. 

First, you need to know if your idea can be patented. To receive a patent for your idea, it must be something new and distinct from anything that already exists, and it must be useful to others.

You also need to know what category your patent fits into. The most commonly accepted categories are:

  • A utility patent, for a new process, a new product, something made by hand or machines, or a composition of matter (like a new drug).
  • A design patent for something that hasn't been made yet. For these patentable products, most often the holder of the patent will license the product to be made by others. 
  • A plant patent, for a new hybrid plant. 

The USPTO has several types of patent applications, including a regular application (RPA) and a provisional application (PPA). You may be able to file a provisional application and file minimal paperwork. The PPA allows you a year to finalize your application. 

Patent Lawyers and the Patent Process 

A patent lawyer can: 

  • Help you figure out if your product is patentable, that it meets the USPTO criteria
  • Search to make sure your patent is unique and doesn't duplicate an existing patent
  • Help you prepare the documents necessary to file the patent application, including a specific description and detailed drawings.
  • Prepare and file the application, which can be a lengthy, multi-document process
  • Help you rework and re-file the application, if you have filed a provisional application, or if your first application is rejected
  • A patent lawyer can also help you if you want to use an expedited (faster) filing process 

Choosing a Patent Lawyer

Some things to keep in mind as you search for a patent lawyer:

  • Start looking for a patent lawyer as soon as you decide to patent your idea. The sooner this person gets started, the better direction you will get in putting together all the documents and designs you need. 
  • You can't select just any lawyer to file a patent for you. You will need to file a patent lawyer who is experienced with intellectual property law and patents specifically. The USPTO registers patent lawyers and patent agents (who are not attorneys). If your lawyer isn't registered, the lawyer won't be able to represent you with the USPTO. 
  • Remember you are selecting a lawyer to file a patent application. There is a good chance that application will be rejected, even with the best lawyer helping you. That means you will have to pay more for the application to be re-submitted. A good patent lawyer will work with you all the way through the process, from initial search to acceptance.

Patent Lawyer Cost

In addition to the cost of the patent application, you will need to pay a lawyer to help you file a patent application depends on: 

  • The type and complexity of the patent. A complex patent, for a large, multi-part machine, is significantly more expensive than a patent for a simple device.
  • The location and expertise of the lawyer. Patent lawyers, like all professionals, specialize. Some patent lawyers work only on patents for drugs, while others work on patents for medical devices. The more specialized the lawyer, the higher the cost. Lawyers in larger cities tend to charge more, as do those in larger firms. 
  • The type of fee structure. Lawyers charge their clients in various ways. Some might charge by the hour, while others may give you a flat rate for submitting the application (and all that goes with it). A patent lawyer might ask for a retainer (a certain amount up front) and more ​money later if the per-hour cost exceeds that amount. 

Upcounsel estimates the cost of an attorney to file an application, from $5,000 to $7,000 for a simple application up to $15,000 for a very complex system. 

Finding a Patent Lawyer

The USPTO has a list of attorneys and agents who are licensed to practice before their office. Martindale-Hubbell has been in business since 1868. They list and rate attorneys by specialty. The American Bar Association has a national database of attorneys, listed by state. Online sites like Avvo and Upcounsel can help you find a lawyer. 

Online Filing Service

You might be able to use an online service if you have a simple patent, or if you are filing a provisional application, but the service only guarantees that the application will be accepted, not that the patent will be approved.