Guidance

Why you should use an IP attorney

Your chances of obtaining a useful patent are significantly greater if you use an attorney. A patent specification is a legal document and requires specialist skills to draft properly.

• From: Intellectual Property Office
• Published: 14 January 2014
• Last updated: 14 January 2015 — See all updates

Developing your competitive edge

Getting the right advice on strategy and the different ways to protect your IP is important so you can use the IP systems to your advantage.

Patent attorneys and registered trade mark attorneys can also advise about how to:

• commercialise your IP through licensing opportunities
• work around the IP rights of your competitors
• defend against attacks on your IP rights

Knowing about the IP rights of your competitors is vital as the stakes can be high. Your IP attorney can advise on the options available for assessing and managing these risks in a practical manner.

This might involve:

• conducting general IP searches and advising on the results
• looking into IP rights of particular competitors
• or performing due diligence exercises such as IP audits

Finding the right advice and advisor is the first step in making the best decisions for your invention or business: Seeking intellectual property advice.

Preparing and filing a patent application

Successful businesses are well informed about Intellectual Property (IP) and are skilled in choosing the right kind of IP rights for their products or service.

Patent attorneys will try to get you the best possible patents. They will handle all the application process to ensure nothing is overlooked. More importantly they will also prepare and file commercially effective applications.

They will use their experience and expertise to ensure that the scope of your claim isn’t too narrow to be worthless, or too broad to be open to dispute. They should ensure that there are no loopholes in your patent that would enable a competitor to take the benefit of your invention whilst working around your patent.

Foreign protection

Getting protection for your invention or trademark outside of just the UK is something a well connected and experienced IP attorney can really help with. Their skills extend beyond the law and practice of the UK and Europe.

Adopting an appropriate international IP strategy can be vital for your business, and making the right choices is very important. There are many aspects to consider, such as:

• should you only get patents in countries where you are manufacturing your product?
• or is it better to get patents in the countries you are most likely to sell your product?
• should you have a European patent in all of the member states of the European Patent Convention, or would selecting a few countries suit your business needs

There are a variety of routes to obtaining IP protection internationally. An attorney can use international IP conventions and treaties to your advantage.

Enforcement

If the worst happens and someone copies your invention (or brand), your attorney will be able to advise you on the best course of action. They routinely deal with these situations for their clients. Results can often be achieved quickly and in a cost-effective manner – contrary to what is sometimes believed.

This might involve trying to put an immediate stop to the infringing activities through cease and desist letters. It might be appropriate to come to an agreeable settlement involving a sale of IP, or a license. An attorney can also provide advice on the costs and benefits of litigation.

Defence

If problems do arise, your attorney will also be able to advise you how to respond. For example, they will be able to advise whether a letter accusing you of infringement of an IP right is a real threat, or just a letter from a competitor who is “trying it on”. They will be able to consider possible defences against infringement. This includes challenging the validity of the IP right. It might be that an appropriate settlement can be quickly reached, for example involving an ongoing licence under the IP rights.

Domain name disputes

Stopping others disrupting your online business is crucial. In today’s market place the internet is very important, but it can be an unruly place. An IP attorney can help you to navigate through such issues as domain name disputes, or conflicts with other parties on major online retail sites such as Amazon and eBay.

Published 14 January 2014
Last updated 14 January 2015 + show all updates

1. 14 January 2014

   First published.