9 votes
Accepted

Do patent attorneys specialize?

It is not unusual to run into a JD, PhD, MD. They would be special specialists. Most patent attorneys/agents feel comfortable working on simple to moderately complex mechanical inventions. Getting ...
George White's user avatar
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6 votes

Do patent attorneys specialize?

Patent attorneys generally have a technical expertise formed by their education and possible employment history. So a chemical patent application, for example, is probably best drafted by an attorney ...
Eric S's user avatar
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5 votes
Accepted

Hiring a US patent attorney that is able to help with getting patents in the EU and China

Yes - many US patent law firms will have relationships with agents and lawyers overseas. Most patent offices require a locally accredited person to do anything other than the mechanics of filing, if ...
George White's user avatar
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4 votes
Accepted

Strategies for minimizing early cost while maximizing future options with PCT application?

The international phase There's no requirement to respond to the ISR or written opinion. While you are provided with the opportunity to file article 19 or 34 amendments and provide arguments, and ...
Maca's user avatar
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3 votes

Is hiring a professional attorney/prosecutor after the first evaluation a good idea?

George White's answer is excellent and should be accepted. I'd just like to add a bit since I'm an in inventor rather than an attorney or agent. Writing a draft of an application is an excellent way ...
Eric S's user avatar
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3 votes
Accepted

Is hiring a professional attorney/prosecutor after the first evaluation a good idea?

I do not think you will save much money in the long run by waiting to involve a professional after you have filed your own document and waited a year or more to get an initial rejection. There are ...
George White's user avatar
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2 votes

Is patent search reserved to agents or attorneys? Is searcher accountable?

Anyone can provide the services of a novelty/patentablity search or patent landscape report. However, a freedom to operate analysis is a different story. Even as a registered patent agent I am leery ...
George White's user avatar
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2 votes

Strategies for minimizing early cost while maximizing future options with PCT application?

Note that after filing the PCT, you won't really need to do anything until December 1, 2019 (30 months after the PCT app priority date), at which point you will incur costs going into the various ...
user132162's user avatar
2 votes

Search engine to find all prior patents of patent attorney

For the U.S. you can go to its patent search page and search for Legal Representative (LREP). I tried it with my first name last name, got 0 hits; first name middle initial last name, got 0 hits. Then ...
George White's user avatar
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2 votes
Accepted

Does a non-resident need a patent attorney to file a Provisional patent application with the USPTO?

No - any inventor in the world can file an application for their own invention with the USPTO. That includes non-provisionals as well as provisional applications. This does not include PCT ...
George White's user avatar
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2 votes
Accepted

Follow-up question - Good ways for inventor to stage patent attorney for success

The bulk of my career was spent working for a medical diagnostics company. Because I worked with life scientists, the culture there was to document work in laboratory notebooks. Paper initially and ...
Eric S's user avatar
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2 votes
Accepted

Filing in multiple countries with the same law firm and attorney

Having a well drafted US application in hand, whomever you hired to file an application in Canada would charge less than if they had to draft it from scratch. And visa versa. If it is not the same ...
George White's user avatar
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2 votes
Accepted

For a patent application that is classified as simple, typically how many attorneys are assigned for such a case in a law firm?

Nearly all my patents were done in-house at my company and those were assigned to a single attorney per patent. I think this is the most common case at small firms too. In one case, a couple of my ...
Eric S's user avatar
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1 vote
Accepted

Could we view a list of patents filed by an attorney on USPTO website?

I'm not sure about using the USPTO site, but for sure you can do this on Lens.org. See the default search below. Lens is generally free and you can use it without creating an account. You get some ...
Eric S's user avatar
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1 vote

If your attorney were to receive high number of non-final office actions, does that mean lack experience or that the claims lack evidence?

At least two questions here - High number of non-final actions? Usually office actions become final very soon in the process. Many non-final actions means the examiner has not succeed in even making a ...
George White's user avatar
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1 vote
Accepted

How to find the patents an agent has drafted or prosecuted?

I've not used this feature, but you can search on The Lens for "Agents & Attorneys". The Lens is free to use and you don't need to register. If you do register you get some additional ...
Eric S's user avatar
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1 vote

Strategies for minimizing early cost while maximizing future options with PCT application?

Perhaps you can look at it this way. How many countries do you really plan to enter once the PCT Application enters national phase entry. If its only USA or few handful more (say Canada and Europe), ...
IPAngel's user avatar
  • 11
1 vote

Strategies for minimizing early cost while maximizing future options with PCT application?

You will not be able to change the specification or drawings in any manner other than to correct a typo (an error in the text that is clearly an error and clearly only has one way to be fixed can be ...
George White's user avatar
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