HOW IMPORTANT IS IT TO HIRE A LAWYER TO HELP ME WITH MY PATENTS?

3 May 2017

 

Well, it is very important to hire a professional to help you! However, this help won´t necessarily come from a lawyer...rs 

 

It is very important because you, without a doubt, shall not risk your economies investing in the patent system, neither as an inventor or as a user, without professional help. There are many rules, many dates, many deadlines...a detail! and you may put a life´s savings in danger. Just for you to have an idea of the complexity: as the patent duration counts from the application date, very little - in practice, almost nothing - can be altered or corrected after filing the application.  So, there is no point in hiring a professional to correct a patent application already filled... Filing a new application is neither possible, because it would not be novel in face of the first one! And this, without counting priorities, continuations in part, the differences between consisting and comprising, all these technicalities! 

 

However, answering your question, this professional is not necessarilly a lawyer, although it might be. The part of the law that studies patents is called Industrial Property Law, which is not an obligatory discipline in most Law Schools. This means that the vast majority of lawyers heard about patents at most,en passant, while studying Constitutional Law or Commercial Law. Those ones who are interested in the subject usually goes to a Graduate Course on Intellectual Law, where he/she will study, beyond patents, all industrial property rights, which includes trademarks, design and geographical indications - you know the wines from the Vale dos Vinhedos, in the South Region of Brasil or the sparkling wines from the region of Champagne, in France? That´s a geographical indication. This graduate course, as a rule, is only partially dedicated to Industrial Property, the other part, being dedicated to Copyright. In consequence, even if a lawyer is specialized in Intellectual Law, it does not mean he/she is a specialist in patents. Specially in a country without a record of technological development such as Brazil. Normally, these lawyers make more money in the art business or working with trademarks. Of course, that´s not valid for everybody! But it´s important to keep these observations in mind when you search for a professional to hire in order to help you out. 

 

Another thing to take into consideration when you search for a professional is how much this person - or its team - know of the technology you wish to protect or explore. It´s improbable that someone that only has studied Law be able to understand profoundly Biotechnology, Mechanics, Chemistry, Electronics, and, Mechatronics or Metallurgy! rs The inverse is also true, hence the importance of counting on a team. 

 

The European Patent Office (EPO) registers the professionals that are allowed to represent applicants in EPO proceedings. The qualification of these professionals is guaranteed because they are only registered after being approved in a qualifying examination. The vast majority of these professionals have at least knowledge of a specific technology and a minimum knowledge of Law. The same applies in the American Office (USPTO), which registers both agents and attorneys

 

The Portuguese Patent Office also registers what they call Agente Oficial de Propriedade Industrial. However, for them, there is no distinction between trademarks and patents. As the market is much bigger for trademarks, you shall check, with attention, if the professional also is experienced in patents because the procedures are very different. 

 

In Brazil, until not a long time ago, professionals were also registered in the same way as in Portugal, including trademarks and patents. They were called Industrial Property Agents. However, as for a Court Decision, this procedure has been extinct. I strongly object to this Brazilian positioning. If the country already suffered with the agents that only knew about trademarks, but insisted on also doing patent jobs; now, clients have to deal with professionals that don´t even know Industrial Property.  So, be careful when hiring someone. 

 

In summary, it is highly advisable that you hire someone to help you. Even if you do not have the intention of patenting, just to explore an expired patent, for example.In this case, the professional will assure you that the technology is really free for exploration avoiding unnecessary litigations in the future.  

 

When hiring, however, be careful and check if the professional - or its team - has a strong formation both in the technology you want to explore and in Industrial Property Law. Finally, be sure he/she has specific knowledge and experience in Patents.

 

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