What Questions to Ask a Patent Attorney?

Rich Goldstein

Founder & Principal Patent Attorney

I know that although protecting your original ideas is crucial, the process of getting it done can be a stressful one. If you haven’t attempted the process, you will find that working with an attorney is essential and can help things along. 

Through my years of dealing with patent attorneys, I have learned how to vet them to get only the best ones. This has usually entailed comprehensive discussions and asking specific vital questions. 

In this article, I aim to provide compelling questions you would need to ask any patent attorney you’re considering. These questions would help you ascertain their capability, amongst other requirements. So, what questions to ask a patent attorney?

What Questions to Ask a Patent Attorney?

The questions to ask a patent attorney should primarily concern their experience – including technical experience with patents. You should also ascertain whether they can explain the patent process to you. This is an indication that they are well-versed and can help you. 

You should also find out about their fee structure, communication system, success with patents so far, and how they would handle the legalities of the process. 

What Experience Do You Have With Patents?

When you meet a patent lawyer, you first want to know just how much experience they have with filing for and obtaining patents. This question gives you a view into their professional background, helping you know important details such as: 

Three lawyers talking to each other holding some documents and laptop
  • How long they’ve been practicing
  • The types of inventions they have worked on
  • How many patent applications they’ve filed
  • How many patents they’ve obtained for their clients  

What Technical Experience Do You and Your Agents Have?

Aside from their experience with patents, you also want to know about your patent attorney’s technical experience. This includes probing into their educational and professional background to see if they have any experience in your relevant field. 

If the lawyer works in a team, you should also inquire about the qualifications of the agents working alongside them. This is to ensure they are well familiar with the intricacies of your invention and know the best approach to your patent application. 

Can You Explain the Patent Process to Me?

The patent application process is a comprehensive and technical one. To stand a chance of succeeding, you need to work with an attorney who understands the process deeply. The right patent lawyer should be able to explain the entire patent process, from application to approval. 

They should be able to guide you through each step of the process, including: 

  • Initial patent search
  • Drafting initial application 
  • Submitting the application 
  • Application pre-prosecution 
  • Application prosecution

They should also make you aware of potential challenges along the way. This transparency will foster a sense of trust between you and the attorney. It will also ensure you are well-informed and engaged throughout the patenting process.

What Amount Do You Charge for Your Services?

Applying for a patent is an expensive venture. Therefore, you need to be clear on the billing structure of a patent lawyer before deciding to work with them. While some charge by the hour, others charge a flat fee or a fee dependent on the success of your application. 

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A breakdown of their fees should be provided, along with any additional costs that may be incurred to prevent surprises down the road. Understanding this upfront will help you plan and prepare for the financial commitment.

How Many Patents Have You Successfully Obtained?

The track record of a patent attorney speaks volumes about their productivity and should be a significant consideration for you. The last thing you want is to work with a lawyer with more rejected patent applications than approved ones. Ask what percentage of their total patent applications are successful. 

You should request insight into the challenges they had to overcome to obtain the patents and why the other applications were rejected. This information helps you gauge their competence and ability to handle potential problems that may arise during your patent process.

Can You Provide Some References as a Patent Lawyer?

Sometimes, it’s not enough to hear about a patent lawyer from their mouths. To find the best, you should go the extra mile by discussing with their past clients. This helps you gain insight into the overall experience they offer their clients in vital areas such as: 

  • Communication style 
  • Professionalism 
  • Efficiency 

A patent lawyer who is confident in their skills will readily provide references for your review. When they do, make sure you contact these references and inquire about their experience working with the lawyer. 

What Is Your Communication Practice Like?

Effective communication is essential for any successful partnership. A clear line of communication ensures that you stay informed and involved in every stage of the patent process. This is why you should inquire about the attorney’s communication practices with their clients, including:

  • The frequency of updates (Daily, weekly, bi-weekly)
  • Preferred channels of communication (Emails, phone calls, texts)
  • Responsiveness to queries

Knowing this will help control your expectations and prevent you from feeling left out or ignored during the patent process.

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How Do You Handle Conflicts of Interest?

During their representation, conflicts of interest may arise between you and another client represented by your attorney. It is essential to find out how exactly they handle cases like this, to be rest assured that they will work in your best interest. Ask them about their protocols for identifying and managing conflicts. 

If they have a well-defined approach, it demonstrates their commitment to maintaining ethical standards and providing unbiased representation.

How Do You Keep Up With Changes in Patent Law?

Considering patent law’s dynamic nature, patent lawyers must stay abreast of the latest changes. One way you can find out about the attorney’s commitment to professional development is by asking: 

  • Are they members of professional organizations?
  • Do they participate in continuing legal education? 
  • Do they attend industry conferences and seminars?
  • Do they read industry publications or have any publications of their own? 
  • Do they network with other patent lawyers? 

Their answers will help you determine if they’re best suited to provide the most accurate and up-to-date legal advice. This will boost your confidence as you navigate the patent process with them.

It is always advised to ask the patent attorneys to do a cost-benefit analysis, as patenting an invention isn’t cheap. Ask your attorney to assess the costs and benefits of obtaining a patent for your product. Seek guidance on whether the investment in a patent aligns with your goals and potential returns.

Tips for Inventors: Meeting With a Patent Attorney

Before you head to that first meeting with a potential patent attorney, here are some tips to remember.

Conduct Your Own Research

Conduct a thorough patent search before meeting with a patent lawyer to ensure your invention is truly novel. This involves discovering if there are any similar inventions and how your invention may infringe on other patent claims. 

An image of a woman using a laptop with some documents and a pen

If you’re unfamiliar with the patent process, it may also help to read up on that before the meeting. This preparatory diligence will make you more informed and ensure a productive discussion with the attorney.

Prepare for a Detailed Description of Your Invention

Before filing a patent application, your attorney must have a clear, detailed understanding of your invention. This ensures they cover all the critical details in the patent specification and develop an effective patent strategy. Therefore, you must prepare a presentation that captures every single piece of information about your invention. 

This includes sketches, drawings, written descriptions, documents, and, if possible, a physical prototype of the invention. You should also be ready to discuss your invention with the attorney, as the documents you bring usually won’t provide enough description. 

Record Invention Timeline

Having a record of your invention timeline will go a long way in assisting the attorney in preparing your patent application. Some of the important dates you need to keep in mind include: 

  • The date you developed the invention idea 
  • The date you made a disclosure of the invention 
  • The date you made a sale or got a sales offer for the invention 
  • The date the invention was published publicly 

You should also make note of any co-inventors or contributors you’ve worked with and your employment status at the time of conceptualization. Being honest about all of these with your lawyer will help you get ahead of any factors that may compromise the patent process.

Speak With a Patent Attorney, Not a Patent Agent

It’s easy to think that patent attorneys and patent agents offer the same services. So, what’s the difference between both jobs? While a patent agent can offer some help during the process, they cannot provide you with legal advice. Only a patent lawyer can. The requirements for becoming a patent lawyer include: 

  • Bachelor of Science degree in an engineering or science field (Takes four years to complete)
  • Pass the state bar exam (Takes three years of law school to complete)
  • Pass the patent bar exam 
  • Register as a patent attorney with the USPTO 

So, you see why you need an affordable patent attorney and not an agent. 

Conduct a Background Research 

Before agreeing to meet with the lawyer, do your homework to learn more about the person’s professional background and experience. Go through their website to learn about their services, mission, working process, and technical background. You can also search for them on the USPTO website to ensure they’re a registered patent attorney

Send Relevant Materials to the Patent Attorney Before the Meeting

Most initial consultations do not go on for more than 30 minutes, which is barely enough time to discuss all there is to discuss. An excellent way to maximize this time is to provide the patent lawyer with any relevant materials in advance. This allows them to familiarize themselves with your invention beforehand, leading to a more productive meeting. 

Some of the crucial materials to send include: 

  • Technical drawings
  • Prototypes
  • Invention timeline 
  • Prior art references
  • Your goals 

Be Entirely Honest 

If you’ve ever worked with a lawyer before, you need to be as honest and open with them as possible. Although you may be skeptical about revealing the details of your invention for fear of theft, you need to understand that the rules of their profession require them to keep any information you share confidential. 

Two men in a suit the other one is holding a pen about to sign a document

Remember, the more you share with your attorney about the invention, the better.

You Are Being Interviewed Too

Although you may not be aware, most times, the attorney you’re meeting with is also observing you to determine whether they want to offer you their services as a client. So, remain respectful, humble, and pleasant even as you assess them. This costs you nothing and can ensure a smooth relationship between you and the patent lawyer throughout the process. 

Points that you should discuss during this interview could be:

  • Explain why your invention is unique and special.
  • Describe how the invention works and include the technical aspects. You can use diagrams to explain better.
  • Discuss potential variations and alternatives that others might pursue. This would help your attorney differentiate between the essential elements and the optimization of the invention.
  • Define what you want to protect; this is where you highlight precisely what you’re trying to prevent other people from copying. Do you want exclusivity over the entire product, certain features, or a niche application? Be sure to mention.
  • Communicate what your intentions regarding the commercial use of the patented invention are. 

Related Questions

How Do I Prepare for a Patent Attorney Interview?

Research the attorney’s professional background to prepare for a patent attorney interview. Next, brush up on the details of your invention to ensure you omit nothing. Also, develop a list of specific questions for the attorney regarding their overall experience and success rates. Lastly, approach the interview clearly, understanding your goals and expectations.

What to Consider Before Applying for a Patent?

Before applying for a patent, you must ensure your invention is novel. Conduct a thorough patent search to ensure there are no existing similar patents. Also, consider the costs associated with the patenting process, including application fees and legal expenses. Additionally, you should determine the type of patent -design, utility, plant- that best protects your invention. 

What Makes a Good Patent Attorney?

A good patent attorney should possess legal expertise and technical knowledge while holding a degree in a science or engineering field. They should also be able to communicate effectively, pay attention to detail, and have a solid track record. Additionally, a good patent attorney should show integrity, transparency, and a willingness to address client concerns throughout the patenting process.

Conclusion

When seeking a patent attorney, asking the right questions can help you get the best representation. Be sure to ask about their experience -both general and field-specific- fees, track record, and communication practices. You can also follow the tips above to help you make the most of any meeting with a potential attorney. 

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