Patents R Us: Information and Services for Inventors and Patent Owners

Filing for a Patent versus Enforcing Your Patent

Receiving a patent for your invention is one challenge. Enforcing your patent once it is issued is quite another. Accordingly, you need to know the difference between patent attorneys and patent agents, and patent litigators and patent enforcement firms.
 
Patent Attorneys and Patent Agents: Patent attorneys are attorneys who specialize in helping inventors receive patents for their inventions. Patent agents are NOT attorneys, but they are licensed by the US Patent and Trademark Office to represent inventors seeking patents. Both patent attorneys and patent agents must meet qualifications set by the Patent Office and they must pass an exam. Patent attorneys and patent agents are also known as “patent practitioners” or “patent prosecutors.” In fact, the process of applying for and receiving a patent is often referred to as “patent prosecution” or “prosecuting a patent.” It is a process than can take years because the US Patent and Trademark Office wants to make sure it only issues patents on inventions that meet the statutory requirements that they be both “new” and “useful,” but also not apparent to the average person. And while patent attorneys and patent agents are indispensible for securing a patent for your invention, they cannot help you if you believe your patent has been infringed because they do not try patent infringement lawsuits. That calls for a patent litigator or patent enforcement firm. To locate a patent agent or patent attorney to assist with a patent application, use our free Patent Agent and Patent Attorney Referral Service.

Patent Litigators: Attorneys who represent patent owners in patent infringement lawsuits are known as “patent litigators.” These are often attorneys who represent clients in commercial litigation, and the many types of commercial litigation cases they try – breach of contract or tortious interference, for example – include patent infringement. There are, however, a few attorneys and law firms that specialize in IP litigation, and they often refer to themselves as “boutique” law firms.
Pursuing a patent infringement lawsuit will be expensive – in fact, very expensive. It can cost millions of dollars to try a patent infringement case because of the complicated issues that are involved. Legal fees alone will run into the millions of dollars, plus there are numerous disbursements or out-of-pocket expenses. These include filing fees, researching the claim, taking depositions, hiring expert witnesses and creating trial exhibits. Some patent litigators will accept their fees on a contingency basis. That is, they will agree to be paid for their time out of any award or settlement from the case, and only if they win the case at trial or reach an out-of-court settlement. Even if the patent litigator agrees to be paid his fees on a contingency basis, out-of-pocket expenses can run to tens of thousands or even hundreds of thousands of dollars, and those must usually be funded by the patent inventor plaintiff.

Patent Enforcement Firms: The solution to taking on a patent infringer and winning your lawsuit is to partner with what’s called a patent enforcement firm. This is a company that specializes in patent enforcement. They partner with patent owners, and for a share of any award or settlement they receive on behalf of the patent owner, they finance and manage the entire process! The patent enforcement firm locates and hires a patent litigator, and the firm also manages the entire process, arranging for researchers and expert witnesses, for example, and covering all disbursements related to the case. In fact, if the patent owner has to appear at a deposition or testify at trial, the patent enforcement firm even covers the patent owner’s travel expenses. And through a unique arrangement that is part of their business model, patent enforcement firms also insulate patent owners from any liability should a defendant file a counterclaim.