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Patent Attorney

Patent Attorney

Choosing a patent attorney

Aside from coming up with the invention or design in the first place, choosing a patent attorney is one of the most important parts of the whole patenting process. It's not an absolute requirement to have one, and there are alternatives. One is taking on the whole process yourself, and another is hiring a patent agent. An agent will have a proportion of the expertise of a patent attorney for a matching proportion of the latter's fees. But unless you are absolutely certain of what you are doing - or very foolhardy - deciding against using an expert will turn a process which already contains an element of chance into a real gamble.

That's because a patent application is a legal process which involves a strong element of contingency in the examination stage, i.e. the bit where the patent office decides whether or not to grant you one. So you want to make sure that your application, which is a legal document, is as persuasive and watertight as possible. Only an attorney can draw up the claims section of a patent application with certainty, and only an intellectual property expert knows all the ins and outs of the process. The claims are not only important for the examination stage but as a description of what is proscribed should you wish, patent granted, to bring an infringement lawsuit. If it's imperfectly worded your adversary may be able to wriggle around it. When choosing a patent attorney, then, it's a good idea to go with one who is registered with the United States Patent and Trademark Office (USPTO). Only USPTO registered attorneys can represent you in court. There's a list on the office's website - www.uspto.gov. Alternatively your own attorney, if you have one, may be able to refer you to someone reliable by word of mouth.

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Choosing a patent attorney takes a little time and effort but it could save you both in the long run. If it's not someone that you know or who has been recommended, it's a good idea to ask them some careful questions such as how long they have been practicing; how many patent applications they have dealt with and how many successfully; whether they are USPTO registered; what else they are qualified to do, etc. Basically, the stuff that will give you a good idea of who they are. And as far as it's possible, ascertain exactly how much they will charge you for their part in the application and how much it will be overall. Bear in mind that a patent application is a costly process. If it sounds expensive, ask yourself very carefully whether it's worth it or not. A patent is not necessary in every case for every business. A decent attorney will advise you on this without trying to persuade you to undertake the application. If you are tempted to offer business revenue or shares as payment, search yourself again as to whether you can really afford it. and note that there are strict laws on that sort of thing (e.g. check out the prohibitions on selling a security).