"Don't skimp on a good patent practitioner; you will pay for it later."
—Dan Brown, inventor of the Bionic Wrench
Patent practitioners assist you with the patent application. They may provide a patentability opinion, draft the patent application, prepare the formal drawings and handle interactions between you and the USPTO. You will need to choose a patent practicioner to work with.
Patent practitioners are either attorneys or agents:
- Patent attorneys are registered with the patent and state bar. They can practice before the USPTO, courts, and can draft legal contracts.
- Patent agents are not attorneys but are qualified and licensed to draft patents and represent you before the USPTO. They cannot draft licensing or confidentiality contracts as an attorney would, or represent you in court.
4 Ways to Find a Practitioner
- Look at the attorneys listed on patent cover sheets retrieved from your prior art search. They are likely experts in the field. Contact them, and if they cannot help you, they may refer you to someone in your local area.
- Find a patent practitioner by using Martindale-Hubbell's free online locator: Search for intellectual property attorneys.
- Search the USPTO database.
- Ask a trusted source for a referral.
7 Tips for Choosing a Practitioner
- Focus on practitioners who are familiar with your invention area: mechanical, chemical, biology, computer science, or electrical.
- Use the client interview to assess the practitioner's personal skills and knowledge of your field of invention.
- Ask them to discuss patents they worked on that are similar to your invention.
- Ask them to list the patent numbers of issued patents they helped draft.
- Ask up-front if they bill by the hour or under a fixed rate, and ask for a ballpark estimate.
- Ask how many patents they helped draft.
- Ask if they have patent litigation experience, because it helps to draft stronger claims.
At your first meeting, the patent practitioner will listen to you explain your invention. He or she will listen and try to learn as much about your invention as possible within the limited time frame. This is a good time to present an organized picture of the invention. After the interview or even before your meeting the patent practitioner will ask you to fill out an invention disclosure form.