Why You Need A Patent Attorney (Part I)

Posted Sunday, February 22, 2015.

A patent is a legal right that is conferred by the U.S. government. It includes the ability to exclude anyone other than the owner of the patent from making, using, or selling the invention covered by the patent.

The process of obtaining a patent is called “patent prosecution,” which involves applying for the patent and persuading the patent office that the intellectual property right should be granted. Make no mistake about it: patent prosecution is a legal proceeding, akin to a lawsuit. You have to persuade a decision-maker (in this case, a patent examiner) that you should be granted the right. And as with any lawsuit, for the best possible outcome you need to hire an attorney to handle the matter on your behalf.

While it’s not a good idea, technically anyone can represent themselves in obtaining patents. If an individual prepares an application for a patent and files it at the United States Patent and Trademark Office without legal representation, a patent examiner will still examine the application and render a judgment as to patentability. However, without prior experience working in the patent field and without legal training, the individual inventor is almost certainly going to receive a less valuable patent than would otherwise be possible, if a patent is even obtained at all.

Recognize that having the exclusive right to a piece of intellectual property, just as with real estate, makes that property unavailable to everyone else. With a patent application, you are instituting a legal proceeding to obtain that property as if you were suing to claim rights to a piece of land you’d been using for decades. And the patent examiner is basically a judge, with a duty to every citizen of the U.S. other than the applicant to keep as much intellectual property for use by the rest of us as possible. In patent prosecution, you are going to be negotiating an end to the controversy that you initiated with the federal government. You’re either going to reach agreement on the location of the boundary lines for the intellectual property you want for yourself, or you are going to abandon the proceeding, walking away with nothing for your effort and money.

If you haven’t entered into such a negotiation previously and have no training in it, how are you going to know whether the property offered to you by the patent examiner is the best deal you could get? How are you going to know how to prepare the application in a manner which maximizes the amount of property you can obtain? How would you know if the patent examiner has made a procedural error in considering your application that impacts your right to the patent?

Also, don’t forget that the value of a patent comes from enforcing it after you get it. That is, you wield the patent to stop another party from using the invention and/or require the other party to license the invention from you. Your ability to enforce the patent is largely dictated by the skill of the person who prosecuted it. That’s why hiring a professional is a smart decision – in fact, it’s the only rational decision.

A trained and experienced patent attorney doesn’t just know how to conduct the negotiation and maximize the size of the property protected by the patent. The trained and experienced patent attorney also knows how to guard against easy design-arounds by would-be copiers. In addition, the trained and experienced patent attorney knows how to prevent crippling statements on the part of the inventor about the intended use of the invention from becoming a part of the public record. The trained and experienced patent attorney keeps up with changes to patent law and understands that what worked well in the patent applications of yesteryear can be fatal to a patent application today.

Without such care, a patent obtained by an individual inventor without the representation of a patent attorney may have no value, with no return whatsoever on the inventor’s valuable time and/or the costs paid to the USPTO for examination and issuance of the patent.

You may not realize it, but even purchases of real property, where there is little controversy associated with the purchase of a home or land, involve legal professionals. In a real estate transaction, which probably seems simple, a price is set, boundary lines are surveyed, title is assured, documents are signed to close the transaction, and then someone takes ownership and someone disposes of the property. The legal rights of the parties with respect to the property are therefore adjusted. Consequently, in some states only a lawyer may close the transaction because legal rights are being adjusted. (In the State of Washington, Limited Practice Officers (LPOs), who are licensed by the same governing authority that licenses attorneys after formal training and licensing examinations, close real estate transactions.)

States mandate that someone who is licensed to practice law handle real property transactions to protect their citizens against flaws or vulnerabilities in the property rights which are transferred. An attorney (or a legal professional licensed by a state’s law board) is intimately involved to ensure that the buyer and seller don’t have surprise legal problems with the property down the road. Yet real property transactions are relatively simple. An intellectual property transaction, such as obtaining the exclusive right to an invention from the United States by way of a patent, is infinitely more complicated than a real property transaction.

If a lawyer or LPO is mandated to handle a simple sale of a house, then a patent attorney is absolutely essential in obtaining a patent for property which is significantly more abstract than a house. Without a patent professional, an individual might even be able to pry a patent out of the USPTO, but a surprise likely awaits upon attempting to enforce that patent.

It would be disastrous to find that the home you had purchased had a flawed title resulting from a bad real estate transaction and you didn’t own it free and clear. Likewise, upon attempting to enforce your patent, you would hate to find out that the flawed patent resulting from prosecuting it yourself didn’t adequately encompass your intellectual property such that others could legally encroach upon it by selling copies of your invention despite your patent.

Don’t take a chance with your valuable invention. You need a patent attorney.

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