Inventors don’t always know who to turn to in order to obtain a patent for their invention and receive support throughout the process. While the INPI (France) and the EPO (European Union) register applications and issue patents, which professional is competent to draft the patent and guide me through the steps to protect my invention in the best possible conditions?
Regulated professions
Lawyers and industrial property attorneys (commonly abbreviated to IP attorneys or IPAs) are regulated professions, the only ones authorized to represent their clients before the INPI and the EPO. Both are listed on registers that validate their skills, but they also follow a number of deontological rules to ensure they deliver the best possible service. IP attorneys are registered on the List of Industrial Property Attorneys, as stipulated in article L422-1 of the French Intellectual Property Code.
In 2018, there were nearly 68,000 lawyers in France, compared with 1,007 IPCs, of which only 650 were patent IPCs (the others being trademark IPCs). The gap is immense!
Specialization in patent law
Not all lawyers have the same specialties, and not all law firms have the in-house resources to cover all specialties.. Patent law is a specific feature of the French Intellectual Property Code. And there are lawyers specializing in intellectual property. In this field, industrial property, and patents in particular, is a very specific title. The IP lawyer is able, for example, to advise the client on the terms and conditions of his patent, and the protection it provides for his invention in France, to initiate infringement actions against competitors and to plead before the courts. Most of the time, however, it is necessary to call on the services of an IP attorney when it comes to patent drafting and assisting you in your dealings with the INPI and EPO until you obtain your patent, as this is a profession in its own right.
In the case of infringement litigation, the lawyer and IP consultant work together to assess the chances of success and to prepare the infringement action from both a technical and legal point of view.
Find the best IP consultant for your invention
To help youobtain your patent, it’s essential to choose the most competent professional for your needs. The best IP attorney is one who is both technically skilled in understanding your invention and legally competent in drafting the patent and assisting you with the procedures in the countries of your choice. Some IP attorneys are also European Patent Attorneys, trained in European patent law and empowered to represent their clients before the European Patent Office.
At YesMyPatent.com, Touroude & Associates’ online service, all our experts are patent attorneys, and most of them are also European patent attorneys.
Did you know?
If the invention is not patentable or the patent is poorly drafted, your patent may be refused! Each time you file a patent application, you have to pay a new fee to INPI.
How to write a patent properly?
Patent drafting requires a high level of technical expertise and a rigorous knowledge of French and European laws and jurisprudence, in order to meet the requirements of INPI and the European Patent Office. Acute knowledge of the criteria for granting a patent not only saves time during the drafting phase, but also helps in obtaining a patent.
So it’s imperative that your IP advisor is specialized in the field covered by your patent. At YesMyPatent.com, Touroude & Associates’ online service, each of our experts, in addition to his or her legal training, is an engineer or doctor in one of the following fields:
- Biology: Biology and Biotechnology, Agriculture…
- Chemicals: Cosmetics, Pharmaceuticals, Food processing, Nanotechnology…
- Electronics: Electromechanics, telecommunication…
- IT: software, connected objects…
- Mechanics: everyday objects, automotive, aeronautics…
The technical expertise of an industrial property attorney
Compared to lawyers, IP attorneys have the technical expertise (an engineering degree, for example) to understand the invention down to the smallest technical detail, and to draft patents in a personalized and rigorous manner. The description of the invention is intended to provide all the information needed to unveil it to the public when the patent is published, in exchange for granting a monopoly to the owner when the patent is granted.
Lawyers have a broader legal knowledge than intellectual property law, particularly in business law, and are the only ones authorized to plead before the French courts. This is why, for example, the lawyer takes charge of filing or responding to infringement actions, and pleads the case before the magistrates, usually assisted by an IP attorney.
Lawyer vs. IP consultant: who’s cheaper?
The cheapest solution is to use either the IP attorney or the lawyer, depending on the work to be done, and to avoid redundant requests to one and then the other. As most lawyers and IP attorneys charge by the time spent on a case, the best price will be obtained if the lawyer and IP attorney work together efficiently, avoiding unnecessary back and forth. Don’t hesitate to ask whether a flat-rate fee for handling the case can be envisaged (this is not always possible). Rates should be studied with this in mind, to find the solution that offers the best value for money. Make a clear distinction between the price of the support fees and the fees charged for administrative procedures.
At YesMyPatent.com, Touroude & Associates’ online service, we maintain excellent relations and collaborate on a daily basis with partner intellectual property attorneys, particularly in cases of infringement litigation (both attack and defense).
