Guide
What a patent attorney does, and why it is not a solicitor
Updated
People arrive at this question because they have been quoted a fee and want to know what they are buying. The short answer is a technical specialist who writes the legal boundary of your monopoly.
A separate profession
Patent attorneys are not solicitors. It is a distinct regulated profession, with its own qualification route and its own regulator, the Intellectual Property Regulation Board (ipreg.org.uk). The defining feature is the combination: a technical or scientific background sufficient to understand the invention, plus the legal training to describe and claim it in a way that will survive examination and, if it ever comes to it, challenge. A solicitor may handle patent litigation or licensing. Drafting and prosecuting the application is the patent attorney's work.
What the work consists of
- Understanding the invention
- Enough to identify what is genuinely new about it, which is frequently not the feature the inventor considers most interesting.
- Drafting the specification and claims
- The claims are the legal statements that set out the technical features protected. Gov.uk notes you cannot change your invention once you file, for example by adding completely new features, so this is the stage that determines what can ever be protected.
- Filing and managing deadlines
- Search, publication, examination and renewal each have their own timing, and gov.uk warns that an application will be terminated if the right documents, forms or payments are not sent on time.
- Prosecution
- Responding to the examiner's objections, amending the claims, and arguing the case for grant. Gov.uk notes there is no limit on the number of times an application can be amended to try to meet the requirements.
- Strategy
- Advising on whether to patent at all, on territories, on timing relative to funding or product launch, and on when to stop spending.
Free advice exists, and gov.uk points at it
Gov.uk states that you can get free advice on whether a patent is right for you from a patent attorney or other professional adviser, many of whom offer basic advice for free, from an intellectual property clinic, or from the British Library Business and IP Centre in London. It also notes that you will have to pay a patent attorney if you want help with the application process, and that fees can be several thousand pounds but give a much better chance of being granted a patent. Taking the free initial conversation before commissioning anything is the sensible order.
One warning worth repeating
Gov.uk states that you may not be able to patent your invention if it becomes public knowledge, and that if you discuss your invention with anyone apart from a patent attorney you may need a non-disclosure agreement. Novelty is assessed against what has been made publicly available anywhere in the world. Trade shows, crowdfunding pages, academic papers and sales conversations have all cost applicants their patents. Raise disclosure at the first conversation, not the second.
This site is not a firm of patent attorneys and nothing here is legal or intellectual property advice. Whether an invention is patentable, and what should be filed and when, are questions for a qualified attorney instructed on the facts.