What services does a patent lawyer provide?
Patent Lawyers - Why Should I Use One?
Patent lawyers can assist with advice on the type of patent application to pursue as well as claims strategy to maximize the scope of the patent. Patent prosecution practice covers:
Provisional – Provisional patent applications can be filed for strategic reasons. For example, prior to business negotiations as either leverage or protection. A provisional patent also gives you time to consider whether to file an application for registration.
Non-provisional Utility – Nonprovisional applications are filed for registration of a patent.
Design Patents – Designs protect the appearance as well as the aesthetic features of a product.
Plant Patent – Plant patents cover living organism plants.
Patent Cooperation Treaty (PCT) Patent.
Additionally, if patent infringement litigation is initiated, patent lawyers can help advise and ensure that a clients needs are met and that its rights are protected. They also advise on patent portfolio management as well as monetizing patents through licensing or filing suit to stop infringement.
Although not required, patentability searches are recommended before filing a patent application. Some advantages include (1) possibly locating “prior art” that could be a barrier to obtaining a patent if an application is filed later, (2) obtaining a set of existing patents and published patent applications that provide guidance on drafting the patent claims, and (3) possibly evaluating whether to pursue the invention in light of the search results. Some disadvantages of the patentability search is added cost, delay in filing the patent application while the search is pending, and uncovering prior art that should be disclosed to the U.S. Patent & Trademark Office. While some inventors skip searches due to these decision points, patentability searches are core patent lawyer services as they lead to the next step: preparing and filing the application.
Patent Lawyer Services — Preparing and Filing Patent Applications
Preparing and filing patent applications — either utility or provisional — is the key patent lawyer service. While this service can be provided by a patent agent, there are advantages to having a licensed patent lawyer prosecute patent applications. Typically, the patent lawyer will prepare at least two drafts of the application for client review and comment. After the application is filed, an Information Disclosure Statement (IDS) is filed to disclose materials related to the patent application. The results of a patentability search are disclosed in an IDS. After the application is filed, the “prosecution” stage of the patent application begins where the U.S. Patent & Trademark Office will assign an examiner, who will evaluate the application and accept, reject, or object to the claims. If at least one claim is allowed, the applicant can elect to issue the patent.
Other Services Typically Provided by a Patent Lawyer
In addition to patent searches and applications, a patent lawyer will often advise clients regarding the following issues:
You can find additional information in our Patents overview page.
See our Legal FAQs page for the answers to more intellectual property law questions.