Who To Hire: A Local Or A National Attorney When Filing For A U.S. Patent Application?

While the United States Patent and Trademark Office (USPTO) doesn’t actually recommend hiring a patent lawyer when filing for a patent application, experienced inventors highly recommend it for newbie inventors. The reason: The patent application and maintenance process including settlements and litigations can be complicated so much so that a non-lawyer can find it overwhelming. Even a single mistake can mean financial loss for the inventor, such as when other steal and profit from his inventions.

The next question: Who should you hire – a local lawyer or a national lawyer?

Advantages of a Local Lawyer

If you’re more comfortable working with a local lawyer, then hiring one makes sense. You may have established a good professional relationship with him, researched his background and track record, and relied on a mutual friend’s recommendation, among others. You may just like the convenience of meeting with your lawyer at a moment’s notice, so to speak, to present your prototype or process.

During these meetings, you can actually demonstrate your invention and show its novelty, utility and non-obviousness. You appreciate the proximity of your lawyer’s office in setting up appointments.

Advantages of a National Lawyer

But you may want to look farther than your neighborhood for many reasons. First and foremost, the patent law of the United States has a national (i.e., federal) scope so it’s neither governed nor regulated at the state and county levels. By its nature, patents are valid in the entire country although their validity will only be recognized in the United States, not beyond its borders, as a general rule.

The bottom line: The patent protection you’re seeking will have a national scope and, as such, hiring a local attorney particularly a member of the state bar isn’t as relevant as you may think it is.

There’s also the fact that patent attorneys should be registered with the USPTO for them to be recognized as authorized counsels of the inventors they represent. Furthermore, they are authorized to represent their clients in any place in the world.

This means that where the USPTO is concerned, you and your lawyer don’t even have to meet in person at any time during the patent application process. With technologies like emails, video calls, and messaging, you and your attorney can discuss issues, provide updates, and make decisions without meeting face-to-face.

In fact, foreign nationals can file U.S. patent applications through their U.S. attorneys without the need for face-to-face meetings! Every information can be transmitted and received through electronic means, not to mention that patent applications can be made online.

Your attorney’s location isn’t an issue with patent applications. The pertinent documents including the description, drawings and diagrams can be emailed in the required format. The reply from the USPTO can also be done in the same manner.

Instead of worrying about the proximity of the attorney to your home or office, you should concentrate on the appropriate qualifications.

資料來源: CtR智群知識產權事務所