Finding An Experienced Patent Attorney For What You Need
This is the third post in my series entitled “How To Find A Patent Attorney: My Guide for Performing Your Own Patent Attorney Search.” If you read my second post, you will know that I recommend that founders of start-ups, entrepreneurs, and general counsel of small businesses search for a patent attorney at a law firm of 20 or fewer attorneys, preferably 10 or fewer attorneys. To find out why click here.
This bit of advice can save you time, money, and trouble, but it doesn’t really narrow your search that much. Therefore, I also suggest that you narrow your search based on your needs.
Knowing What You Need
I suggest narrowing your search based on the type of services that you are looking for. Patent attorneys and patent agents use specific terms of art to describe who we are and the services we provide. By knowing what you need, you can refine your search by knowing the exact terms and jargon that you are searching for.
Types of Services: What Are You Trying To Do?
I Want a Patent
If you want to pay someone to draft and file a patent application in the USA, then you should search for a patent attorney or a patent agent. A “patent agent” is a professional who is registered to practice before the U.S. Patent and Trademark Office (USPTO). A “patent attorney” is a patent agent who is admitted to practice in a least one state. For example, I am a patent attorney, because I am registered to practice before the USPTO and admitted to practice in Texas. A patent attorney is always a patent agent. A patent agent may or may not be a patent attorney. By the way, a “patent lawyer” is the same thing as a “patent attorney.”
I suggest not searching for an “intellectual property attorney,” because this term applies to any attorney who practice in the areas copyright, trademark, patents, trade secrets, and more. If you need patent services, search for a patent attorney or a patent agent.
Patent Preparation is the term that that the patent community uses to describe drafting and filing a patent application. “Patent Prosecution” is the term that the patent community uses to describe the service of helping a client obtain a patent after the patent application has been filed. The combined service of drafting a patent application, filing it in a patent office, and convincing the USPTO to issue the application as a U.S. patent is known often known as “patent preparation and patent prosecution” or “prep and pros” for short.
If you want a U.S. patent, I suggest searching for a U.S. “patent attorney,” “patent lawyer,” or “patent agent” who helps clients with “patent preparation” and “patent prosecution.”
I Want to Bring an Innovative Product or Service to Market Without Getting Sued for Patent Infringement:
This type of patent service is known in the patent field as a “patent opinion” work or simply “opinion” work. There are basically four types of patent opinions.
Freedom to Operate Opinion: This type of opinion searches the issued patents and published patent applications of a country to determine if a method or product will infringe any issued patents of that country. This type of opinion is also known as a “freedom to operate study,” “freedom to operate search,” or a patent “clearance” opinion.
Patent Infringement Opinion: This type of opinion is focused on whether a product or method would likely infringe one or more claims of a patent or published a patent application.
Patent Validity Opinion: This type of opinion is focused on whether the claims of one particularly threatening issued patent would be found valid by a court.
Patentability Opinion: in this context, a patentability opinion is focused on whether the claims of a threatening published patent application would be valid over the prior art.
Any attorney can provide patent opinion work. Some states may allow patent agents to perform this work too. However, I strongly recommend only using a patent attorney for this work because these opinions are based on patent law and patent prosecution.
If you want to avoid getting sued for patent infringement, then I suggest you search for “patent attorney” or “patent lawyer,” “patent opinion,” and if possible, the name of the specific type of patent opinion that you are looking for.
I Want To Sue for Patent Infringement (or Defend Against It):
Any attorney can sue someone for patent infringement. An attorney who provides patent litigation services is often known as a “patent litigator,” but any litigator can provide this service.
Importantly, patent prosecution and patent litigation are different skills with little or no overlap. If you want to sue for patent infringement, I suggest that you search for an attorney with as much hands-on, patent ligation experience as possible. If you want a patent, I suggest that you search for a patent attorney or patent agent with as much “patent prosecution” experience as possible.
By the way, if you are an entrepreneur or founder of a start-up, you should avoid getting into a patent infringement lawsuit at all costs.
I Want to License My Patent Application or Issued Patent:
Patent licensing just applies contract law to patents. Any attorney can draft and negotiate a contract (license) for a patent. However, I recommend that you search for a patent attorney or intellectual property attorney with as much patent licensing experience as possible.
The next post in my “How To Find A Patent Attorney: My Guide for Performing Your Own Patent Attorney Search” series will cover “Finding The Best Patent Attorney For You.” Please click here for the fourth post in this series.