The Inventors Expertise
Inventors frequently are experts in their particular field. They understand the pertinent technology, and they have developed an innovation that may revolutionize the field.
It’s only natural for this individual to want to obtain a patent on their invention. Occasionally, inventors are tempted to draft a patent application and to try to prosecute it without assistance. This generally ends up being a costly error.
Although the inventor possesses incredibly detailed knowledge of their invention, they do not have any training or experience when it comes to writing a proper patent specification. Moreover, they likely do not have the legal knowledge that is necessary to complete prosecution. This lack of experience and knowledge may cause them to make a fatal error that precludes them from obtaining any patent protection.
Working with a professional in the intellectual property field can help to prevent this situation. It also ensures that you don’t end up with a patent that is so broad that it is essentially meaningless or with one that is so narrow in scope that it doesn’t provide any protection.
Most of these professionals work in intellectual property law firms. Patent engineers, patent agents and patent attorneys all may work together to ensure that your invention gets the legal protection that it deserves. What are the differences between these patent professionals?
A person who works as a patent engineer must have considerable specialized knowledge in a scientific or technical field. While they have not passed the patent bar and are not a lawyer, they still are able to perform numerous essential functions.
Patent engineers may perform searches in various databases to discover prior art for a particular invention. This may help with a decision regarding whether or not patent protection may be available for a certain innovation. The engineer may write reports or even provide much of the detail for the specification of the patent application.
Occasionally, the patent engineer works closely with the inventor to better understand the new product or process so that it can be adequately described in the specification.
Like patent engineers, patent agents have a great deal of knowledge in scientific or technical areas. It’s not unusual for these professionals to hold a graduate degree or a Ph.D. Moreover, they have passed the Patent Bar Exam before the U.S. Patent and Trademark Office. This qualifies them to file patent applications, advise clients as to the patentability of their inventions and to assess prior art.
While patent agents are qualified to handle almost any patent prosecution matter before the USPTO, they are expressly prohibited from providing legal advice. Accordingly, clients who need legal counsel for any business-related matter that is connected to their pursuit of a patent will need to work with a patent attorney.
One of the main advantages of working with a patent agent as opposed to a patent attorney is the cost. Their hourly rates tend to be more affordable.
A patent attorney is essentially a patent agent who also holds a legal degree. Like engineers and agents, these attorneys must have formal education in a scientific or technical area. This may include a Bachelor of Science, Master of Science or a Ph.D. These professionals then attend law school, and they must pass the bar exam in the state where they intend to practice.
Next, they must pass the Patent Bar Exam to practice before the USPTO. With their education and background, patent attorneys are prepared to handle all facets of patent prosecution. This may include litigation if a patent is being infringed.
While it may cost more to hire a patent attorney than a patent agent, it is typically worth the expense. Working with a patent attorney provides you with all of the knowledge and skill that you’ll need to negotiate the process of pursuing patent protection.
As all of these patent professionals typically are employed by an intellectual property law firm, it is likely that an inventor may encounter at least two and perhaps all three of these professionals. Each one is working toward the same goal of obtaining the broadest, most meaningful and enforceable protection that is available for your invention.
Author: Jeff Williams
Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.
Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.