Why use a ‘Patent Agent’ instead of a Patent Attorney?
-WHAT’S THE DIFFERENCE ANYWAY?
Both patent attorneys and patent agents are qualified to file patent applications with the USPTO. The hourly rates charged by patent agents are usually half or less the rates charged by patent attorneys/lawyers and thus the client has the option of considerable cost savings in filing and prosecuting patents with the USPTO.
The key differences between a patent agent and a patent attorney are as follows:
- Patent attorneys file lawsuits, patent agents don’t;
- Patent attorneys do trademarks, patent agents don’t;
- Patent attorneys write contracts (such as to sell your invention); patent agents don’t;
- Patent agents can cost 3 times less than patent attorneys.
Both patent agents and patent attorneys have a degree in science or engineering, are tested and certified by the USPTO, and abide by the same code of ethics. Like any attorney, patent agents are dedicated to keep your secrets in confidence and will zealously advocate on your behalf. Some patent agents will also file internationally (through the WIPO) on your behalf, if requested, generally naming the USPTO as the “Receiving Office”.
I have an invention: should I File a US Provisional, a Non-Provisional Application, or a PCT Application?
Filing a US “Non-Provisional” application is always the safe choice, but is not the right choice for everyone.
Often, a client is advised to file a “provisional” quickly and fix it up later. This will be even more tempting when the new “first-to-file” rules take effect in the US.
Many firms advertise “special” lower rates for filing “first-cut” provisionals that you largely write yourself. But beware: this can be a way of growing their docket at your expense in the long run. A provisional application that does not fully describe and enable your invention, or is filed before your invention is complete, will cost much, much more when the time comes to “convert” it to a non-provisional application. And a provisional patent that does not fully enable the invention can be fatal to future rights in Europe, particularly if you rely on the provisional when disclosing the invention to potential customers.
That said, filing a well thought out provisional application gives you an extra year of patent term. If your drawings are fully illustrative of the invention and your application is thorough and complete, it could be a good choice.
Your other option is to file a PCT Application (i.e. an international application), at any time in the first year after filing in the US, or by going straight to the PCT. PCT filing fees are about $2.5 – 5K, but the 30 month term, before you decide what countries to file in, and the value of the preliminary search report, make this a great option if you expect to market overseas. Keep in mind, however, that the US Patent System offers a great deal of flexibility in amending that is simply impossible in other nation’s patent systems, and the costs are not for the faint of heart.
How do I patent an Invention?
Obtaining a Patent begins by filing a patent application.
The US Patent Office examines the application to determine whether the invention meets certain legal criteria: most notably:
- enablement and
- written description
The patent application must generally contain drawings, an accompanying written description, and a set of claims. The claims define your legal ownership of the invention. After making any necessary amendments to the claims, the Patent Office will grant a patent if the invention is eligible. Your patent term will run 20 years from the earliest filing date (excluding provisional application filings), but will be adjusted for any delays in prosecution that are the fault of the patent office.
Patent Office procedures can involve considerable complexity and may take several years. A patent professional will guide your application through each stage of the process and keep you informed as the application progresses.
Patent strategy can be adjusted if international prosecution is warranted. Patenting an invention opens the door to a range of business strategies, including licensing and royalties; options that can be discussed in light of your business plan.
Should I Pay for a Professional Patent Search?
Not right away. An initial search by the Inventor, relying on keywords or phrases and classifications, can be very helpful, and can be performed at sites such as www.freepatentsonline.com. Each patent found will lead to crossreferences that cite or are cited by the patent, so that a widening circle of references develops. These references help the inventor to see key differences between the invention and the closest prior art and can also lead to useful improvements in the invention.
A US applicant is under no obligation to perform a search at all, but you can avoid the trap of attempting to patent something that is already patented by searching before filing. The Inventor can proceed with a reasonable level of confidence that the invention will not be rejected out of hand.
A negative search result can miss something, but a patent professional will attempt to draft the patent claims in such a way that materials discovered later will not defeat the patent application. Don’t forget that the scientific and general literature, including books, tradeshows, and periodicals, are also fair game.
Why Do I Need a Business Plan if I am an Inventor?
There are a couple reasons why Inventors benefit from a Business Plan. First, the patent itself does not guarantee a market for a product, and selling the idea alone can be much harder than selling a business. Most patents are successful commercially because the Inventor starts a business around the concept or demonstrates feasibility. Also, patents do not enforce themselves. Following publication at 18 months, the entire world has the blueprint to start a business based on your invention, so use that 18 month head start to its fullest!
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