Chapter 7 of my book Invent It and Be Your Own Boss recommends consultations with 2 to 3 patent attorneys before you hire 1, and it lists 5 question areas for those consultations: experience, expertise, success rate, communication style, and fees and billing. I hold 10 U.S. patents and 6 international patents, and my own filings add 3 topics to raise in the same consultations.
Before the Consultation: 3 Needs to Assess
Chapter 7 starts with 3 needs to assess before any search for an attorney. Complexity is need 1: an invention that requires specialized technical knowledge needs an attorney with experience in that technology area. Challenges are need 2: an application already facing complex office actions needs an attorney with experience answering them. Budget is need 3: determine a comfortable budget for legal fees, because attorneys charge different fees based on their expertise and the complexity of the invention. Gather the sketches, prototypes, research reports and other records of the invention before consultation 1, and learn the basics of the patent protection your invention requires, so you can find an attorney who specializes in the area of law your invention requires.
Where to Find 2 to 3 Candidates
The book names 3 sources for candidates: online directories, professional networks and industry events. Narrow the list to a few names and schedule consultations with 2 to 3 of them, so you compare expertise and working style across more than 1 attorney. Write your questions down before each consultation; Chapter 7 lists a prepared question list as the 1st tip because it shows the attorney you are serious and prepared.
The 5 Question Areas
Experience is area 1: ask how many years the attorney has practiced patent law and what experience they have with inventions similar to yours. Expertise is area 2: ask whether their technical background matches your invention’s field and whether they follow the relevant case law and industry trends. Success rate is area 3: ask what share of clients with similar inventions they have taken to a granted patent. Communication style is area 4: judge during the 1st meeting whether the attorney explains legal concepts in terms you understand, because a patent application can run for several years and you will work with this person for all of them. Fees and billing are area 5: ask for the fee structure and whether flexible payment options exist, and settle both before any work starts so the billing holds no surprises.
3 Topics My Own Filings Show to Raise
Topic 1 is what a provisional application allows later. Chapter 3 records that my attorney did not explain, before I filed the sauna tent provisional application, that a provisional limits the features and claims that can be included in international filings. Only the United States allows an inventor to add claims and design features after the provisional, so my sauna tent patents in Canada, China and Australia carry only the original provisional claims. Ask what can be added later in the U.S. and in each other country before the 12-month provisional is filed.
Topic 2 is the budget for office action responses. All but 3 of my patent grants included rejected claims that were defended and revised before issuance; those costs were outside my initial budget, and I borrowed money to pay the fees and keep the applications alive. Chapter 6 states the usual response window as 3 months, extendable to 6 months for an added fee. Ask how the attorney bills each of those 3-month responses.
Topic 3 is your own review of each draft. Chapter 1 records that I found several errors in the legal claims and descriptions of my applications by reviewing them carefully, and it advises inventors to examine the attorney’s work, ask questions and give feedback before the patent is filed. Ask how the attorney schedules time for that review of all 3 parts: specification, drawings and claims.
After You Hire: 3 Working Rules
Chapter 7 gives 3 rules for the working partnership. Rule 1: communicate your goals and concerns about the process from the 1st meeting. Rule 2: listen to the advice and ask about anything unclear, and keep asking until you understand the legal implications. Rule 3: keep the attorney informed of new developments in the invention. The book adds 3 habits: regular check-ins on progress, prompt responses so the application does not stall, and requests for clarification whenever legal terms are unclear.
For the filing itself, bring 5 kinds of documentation: detailed descriptions, drawings, prototypes, research reports and a competitor analysis. Define the unique features of the invention as precisely as you can, because Chapter 7 ties precision in that list directly to a stronger patent. If you are apprehensive about sharing the idea, discuss a non-disclosure agreement (NDA) with the attorney before the details, and Chapter 7 recommends an attorney who specializes in intellectual property law, covering patents, trademarks and copyrights.
The Invent It Action Workbook turns this chapter into Section 12, Working With a Patent Attorney, with an interview worksheet, and Bonus Tool 3, Patent Attorney Call Prep, for the 2 to 3 consultations.
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This article is for educational purposes only.
