Why You Need a Patent Attorney

Don’t Lose Patent Rights

It is common for some individuals or small companies to attempt to navigate the patent system on their own in an effort to save money. With the prices charged by some competitors for patent work, their actions are understandable. However, this is not recommended. There are multiple deadlines and other various dates which can creep up unexpectedly resulting in missed opportunities and lost protection if you are not fully aware of the processes and law.

Currently, under U.S. patent law, an inventor can publicly disclose his invention without losing patent rights, provided that he files a patent application within one year of that disclosure. How does that affect your ability to file in foreign countries? Each country has some different patent rules. The America Invents Act that changed our patent system from a first-to-invent system to a first-to-file system is a step toward harmonization of our law with the rest of the world. However, differences still exist and the danger remains when traversing the process alone.

  • Can you advertise the invention for sale?
  • Can you share it to potential investors?
  • When do you need to file the application in view of your disclosure?

Posting information on a website is a public disclosure. Many foreign countries prohibit the patenting of an invention after disclosure has been made anywhere in the world. Disclosure to an investor may be OK provided that the investors are required to sign a non-disclosure agreement. Even with proper agreements in place, there is risk in disclosing to investors prior to a patent filing. Additionally, many investors won’t sign these agreements. In this case, the inventors should disclose as little as possible regarding the invention. If too much is disclosed, this could have a significant negative effect on patent rights. Even if the complete invention is not disclosed, the amount of the disclosure may cause the invention to be adjudged obvious in light of other prior art.

The bottom line is that patent deadlines that can result in loss of patent rights are another reason that inventors should work with a patent attorney who can guide them through the various deadlines and provide advice regarding US and foreign patent filings. Saving a bit of money up front often results in the loss of patent rights in the end.

How to Choose the Right Patent Attorney

  1. Are you comfortable talking with your attorney? An attorney is a counselor with regards to legal rights and obligations. They can be very important and useful. However, if you find it difficult to talk to your attorney or just don’t feel that connection then maybe look elsewhere. Additionally, if your attorney lacks the ability to communicate effectively or timely (return calls/emails) then look elsewhere. Trust is built up by effective and useful communication between two parties. If you can’t trust your attorney, then why are they your attorney?
  2. Focus on the competency of the attorney more than firm size. The firm size is not as important as the skill of the attorney working your file. Don’t be fooled by the stigma that attorneys at large firms are better than attorneys at small firms. The correlation between attorney competency and firm size is very small, if non-existent. The correlation between the size of your fee and firm size is more significant than you think. You rightfully should pay the attorney his/her reasonable value…you shouldn’t have to pay extra just because the firm is large.
  3. Don’t be fooled by the sales pitch. Become knowledgeable about the legal process as much as you can. Intellectual property law can be complex. Understanding when something sounds fishy or too good to be true can be difficult. Learn all you can and be prepared with some information when you see your patent attorney. Most are honest and give good advice…some just tell you what you want to hear.
  4. Ask about fees. Fees are done in three ways: Flat Fees, Hourly Fees, Contingency Fees. There is a reason and time for each type. Flat fees work great for transactional work – work that is maybe considered repetitive or easy to gauge in time. Hourly fees are used when the amount of work required is not so easy to predict. Contingency fees are used typically with litigation when the value of the work is based on some sort of settlement or award of money. In particular, ask the attorney how they compute their time and fees, and what sort of things they bill you for (i.e. short phone calls or emails).
  5. Location. Some areas of law require frequent consultations and interactions with an attorney. Think of family law for example. Intellectual property law for the most part does not require as much one-on-one time with your attorney. Keep in mind the attorney should be accessible for you, but the face-to-face meetings are not as necessary in this type of law. Much can be accomplished electronically or via email. Location may be useful but not an absolute necessity. The closest patent attorney is not always the best fit for you and your legal issue. Be open to the idea of looking a little farther out if it means finding a better intellectual property attorney to suit your personality and needs.

Contact us at either of our Houston or Dallas/Fort Worth offices for a free consultation.

4 Occasions When You May Need a Patent Lawyer


Mar 26, 2015

If you’ve got a new idea, no matter whether it’s an idea for a new technological invention or for a new, revolutionary type of business, you might be in need of a patent lawyer. Patent lawyers specialize in all forms of intellectual property, including: patents, trademarks, copyrights, and trade secrets. Any individual or business looking to bring to market a new or revolutionary product or service should consult with a patent attorney. The main reason is that a patent attorney can advise you on every aspect of intellectual property, patents included. Patent attorneys perform various functions, and there are various instances when you might find yourself in need of a patent lawyer throughout your venture.

It should be noted that patents do not give you the right to make, use or sell your invention. Rather, they exclude other people from making, using, selling or importing your invention in a particular geographic location. Basically, patents are set into place to protect a new idea that you’ve come up with for a set period of time. Patent law can be extremely complicated and often can trip up the inexperienced; therefore, you should seek the advice of qualified patent attorneys like the ones at our law office. We specialize in assisting clients in all forms of intellectual property and can navigate the pitfalls of protection in the best possible way for your needs.

Our patent attorneys here at the Law Offices of Jeff Williams PLLC specialize in patent law and trademark law in Dallas, TX. We’re here to help not only inventors but also businesses and entrepreneurs seeking intellectual property right protection. We stay up-to-date on the latest technologies and laws governing patents and trademarks, and other forms of intellectual property.

Patent Application

One instance where you need a patent attorney is when you’re applying for your patent. A patent attorney has the proper knowledge, skill and know-how to conduct any necessary research to determine whether your idea actually warrants a patent. After conducting research, the lawyer can then craft, file and prosecute your patent application to the end of the process. Oftentimes, the patent application reviewer will find errors or points in your application that need more explanation or revision, and having an experienced patent attorney on your side can ensure that the application process goes as smoothly as possible.

Litigation

Another instance when you might require the assistance of a patent attorney is when there is an infringement of your property rights. Just as you would require a criminal defense attorney to defend you against any criminal charges, you should seek the assistance of a patent lawyer when somebody has infringed upon your trademarks, copyrights or other intellectual properties. Patent lawyers can do everything from filing an opposition for you to representing you in a court of law throughout your copyright infringement cases. On the flip side, if you are accused of copyright infringement, patent lawyers can defend you from such accusations as well.

Licensing Challenges

Sometimes licensing challenges might arise with intellectual property rights, and patent lawyers like those at our law office are the ones to turn to when you need these challenges tackled. Patent lawyers know the appropriate procedures and tactics to take to combat licensing challenges and ensure that your patents, trademarks and copyrights stay legal and intact. For instance, if you grant a license to another party to make and use your patented articles, you need to make sure that everything is done clearly, concisely and according to the book to help prevent any future challenges. Patent lawyers are just the ones to oversee licensing and any obstacles pertaining to it.

Negotiating Contracts

You might also be in need of a patent lawyer if you’re in the process of negotiating a contract. Patent lawyers can ensure that your best interests are kept in mind when you’re negotiating terms with other individuals or businesses. For instance, when you license off your artwork, making sure that you negotiate a good royalty deal is essential for ensuring that you maximize your profits. Patent attorneys can ensure that you receive the best royalties, terms, gross and net sales and deductions for the licensing of your patents, trademarks, copyrights and other intellectual property.

No matter what type of intellectual property you need, assistance from a patent lawyer within our team of attorneys is more than amply equipped to assist you.

Free Patent Lawyer Consultation