Do you need a patent attorney?

Generally, a patent attorney's advice will be helpful when you are planning an effective IP strategy, and essential if you decide to apply for a patent. Legally, however, you only have to appoint a patent attorney if it is required by law. 

First, who is a patent attorney?

Patent attorneys are usually experts in all forms of Intellectual Property (IP) and spent many, many years to become qualified in order to be able to assist you.

In Europe, there are strict requirements how one can become a European Patent Attorney. Some of these requirements are:

1. Possessing a scientific or technical qualification - for example, in biology, biochemistry, chemistry, electronics, pharmacology or physics;

2. At least three years of full-time training in the European patent profession;

3. Passing the European qualifying examination (pre-exam and main examination including A, B, C and D exams, each lasting about 4-6 hours);

4. Being a national of a Contracting State and also having a place of business or employment in a Contracting State.

It is very important that you find a patent attorney that you trust. A patent attorney can improve your chances of obtaining worthwhile protection for your idea, and can act when problems arise. Your attorney communicates with you and the patent office and makes sure that you obtain the broadest protection possible. Your patent attorney will be able to advise you on all IP matters. 

In Europe, you have to appoint a European Patent Attorney, who is qualified to represent clients before the European Patent Office (EPO). For matters outside Europe, your European patent attorney will arrange representation for you through his/her established local contacts or partner offices.

If you appointed a representative (European Patent Attorney) in the patenting procedure, your patent attorney will be shown in the European Patent Register, and the EPO will send all notifications (communications, notices, decisions and summonses) to your representative's address. Your representative will forward you these notifications and will be able to offer you advice how to proceed. Of course, the final decision about the next step will always be up to you, the applicant. Also, you can change your representative at any time.

When cooperating with a patent attorney, you do not need to ask him/her to sign a confidentiality agreement, since a patent attorney is obliged to keep all information – that he/she is told in confidence in the exercise of his/her duties – confidential.

Let's see the legal facts and then our advice and opinion on whether you need a patent attorney when you file a European Patent Application.

Facts

According to the EPC, 

1. Applicants having residence or principal place of business in a Contracting State do not have to be represented.* Everyone else must appoint a representative and communicate with the EPO through the appointed representative.

   So, if you are a resident in any of the EPC member states, you are not legally required to have a representative. You can communicate with the EPO yourself. However, American citizens or Japanese companies - for example - must act through a representative. (Otherwise, their patent application will be refused.) Interestingly, European citizens who do not have a residence or a principal place of business in a Contracting State, must also appoint a representative.

2. For filing nobody has to be represented.*

   Anyone – even inventors from Argentina, Brazil, China, Australia – can file his/her own invention with the EPO without a representative. However, for every action after the filing (for example filing a translation) he/she will have to act through a representative. If a representative is not appointed after filing, the patent application will be refused.

3. Everyone is allowed directly pay official fees to the EPO.

   Savvy applicants can pay the official fees themselves, though it is best if your patent attorney monitors the deadlines and takes care of the payments.

Opinion

As mentioned in other articles as well, we do not recommend preparing your own patent application, since it can cause many problems later. Problems, that will cost you thousands of euros and deprive you of having a worthwhile patent. 

A better alternative is if you conduct your own prior art search, ask a patent attorney to prepare your patent application and then file the necessary documents with the patent office on your own. You might be able to do this if you have a limited budget, are not legally required to appoint a representative and are precise enough.

It is the claims only that define the extent of your patent right. So, if your claim is not well drafted, your patent will not be worth much. If it contains too many features, or a non-essential feature, it will be very simple for your competitors to circumvent your patent. Thus, it is very important that you have professionally drafted claims.

However, it is not only the drafting that patent attorneys can assist you with. European patent attorneys know the EPC, so they are aware of the steps of procedures, fee reduction possibilities, different deadlines and rules, they have experience how to prosecute your patent and can advise you on all IP matters. They can also help you create your IP strategy, which is very useful before actually filing your first patent application.

On the other hand, please remember that no patent attorney can ensure that your patent will result in any financial reward. The expertise of patent attorneys is restricted to IP law. To build a successful business, you will need a lot more than a patent protection.

* This is described in Art.133(2) EPC:
”Natural or legal persons not having their residence or principal place of business in a Contracting State shall be represented by a professional representative and act through him in all proceedings established by this Convention, other than in filing a European patent application; the Implementing Regulations may permit other exceptions.”
See the full legal text here.

Author: Zsofia Pintz
Published: August 2020
Updated: July 2023