This is one of several blogs about patenting an invention.

  1. Do I really need a patent attorney?

Yes, you do. It is possible to obtain a patent by yourself, and the PTO will even help you do it, but it is not likely to be of much value.

Let me explain: The value of a patent flows from two main places: (1) the claims; and (2) the written description of the invention. Patent attorneys usually write those sections very well, partly because they have been doing it for years, but also because patent attorneys know how claims and written descriptions can be attacked by an examiner during prosecution and especially by defendants in litigation. Non-attorneys do not have that experience, nor do they know how to prosecute a patent application. You need a patent attorney.

  1. What is a “claim” and why does a patent application need them?

A patent is a document that accomplishes two big goals: (1) it describes an invention so that others can make and use it; and (2) it defines the legal boundaries of the invention. Those legal boundaries are described by patent claims.

A patent claim is a sentence that describes a property fence around an idea. Every patent must have at least one claim, and most patents have between 10 and 20 claims. A typical claim will list the essential features of an invention and describe how they connect to each other.

The reason a patent can have many claims is that inventions are often multi-faceted. That is, they often have a variety of features. Creative patent attorneys can often find ways to describe those features in different ways using different combinations. Each combination will correspond to a different claim. And technically, each claim is a different invention.

If someone infringes your patent, it will be because they have made, used, or sold something that falls inside the property fence defined by one of your claims. At that point, all eyes will focus on the precise meaning and arrangement of the words in your claims. You want a patent attorney to write them. Good patent claims are not easy to write.

  1. What is a patent attorney anyway?

A patent attorney is a lawyer who has passed a state bar exam and has also passed a special bar exam given by the Patent and Trademark Office. 

The patent bar exam tests an applicant’s knowledge of the patent application process, and the specific (often arcane) rules associated with filing patent applications and responding to patent examiners. You cannot call yourself a patent attorney unless you have passed the patent bar exam, and you cannot take the patent bar exam unless you have obtained a significant number of university credits in a PTO-approved science-related subject. This means patent attorneys are usually science nerds.

A patent agent is a person who has passed the patent bar exam but is not a lawyer. They can prepare and prosecute patent applications at the PTO. Patent agents usually work for law firms. They can be excellent resources, but they are often difficult to find.

Clyde Findley is Special Counsel in the Intellectual Property practice at Berenzweig Leonard. He can be reached [email protected].