Alright, so you’ve come up with a list of questions to ask a Patent Attorney. Good for you!
You might be thinking:
“Great, I just need to explain my invention in great detail, and they will take it from there! Right?”
There are many aspects that go into finding the right representation from a patent attorney or patent agent.
To help you with the success of your invention, I have put together ten tips to help you get started in protecting and bringing to market your visionary idea.
So… before you go clicking that shiny “free consultation” button on the patent attorneys website please read over this article! 🙂
Tip #1: Do your OWN Diligence First
In order to get a patent, you’ve got to be the first one.
Yes, that’s right, the first one in the WORLD to have conceived and be able to articulate through words and drawings, what you’ve created.
So BEFORE you call a Patent Attorney, make sure that you do initial research on your own to find out if your invention already exists.
- Do a Google patent search to see what has already been patented.
- Look at the USPTO website. This is the best resource to get general information about the patent process. It will be important for you to understand the basics of patent law when you meet with the attorney.
By doing your own diligence, you’re going to be able to make a list of questions that are STILL lingering, even after you’ve gotten a little dirty.
To quote Eugene Ionesco:
“It is not the answer that enlightens, but the question.”
Said another way, you can gain a LOT by knowing what questions to ask, and…
…you won’t know unless you’ve done the homework.
Tip #2: Prepare Your Invention for a Detailed Discussion
The Patent Attorney needs to understand your invention inside and out.
Organize every bit of information about your invention so that when you attend your meeting, you can clearly articulate what your invention is.
Don’t be afraid of quality – Patent Attorneys LOVE sketches! Yes, even the napkin sketches, doodles, or imaginations of your inventions.
Check out the image below that I past client came with when creating his universal footrest for a stationary bike. His idea is now patented!
So exciting watching and helping inventors live to their purpose by protecting and bringing to market their visionary ideas!
PS: If you need help with this process. We can help you figure it out! It is not the end of the world if you don’t have the scetches created yet.
So, bring all your visual work with you to your consultation. It will help your Patent Attorney understand your invention..
Include any writings you’ve done as well. This should include any handwriting, word documents, or print outs from the patent search you did as part of Tip #1.
As Patent Attorneys, we are not experts in all industries, and any detailed information about your product and its industry will help.
A physical prototype of your invention should be brought too if you have one. Especially if your invention is something functional that cannot be shown well by still images or charts.
Now – I’ve had clients bring their inventions into my office on a dolly, or hire people to help them move it in. Please don’t do that!
If you cannot physically carry your invention into an office, it’s probably best to not bring it.
If you insist the over-sized prototype must be seen in action, then consider doing a video or phone consultation with your Patent Attorney.
Overall, the more information about your invention that you bring to the consultation, the better.
And remember, the papers, the drawings, the written descriptions can’t do it alone. You WILL have to speak clearly to tell your Attorney about your invention. If public speaking is an issue, simply write down what you want to say and refer back to your sheet in case you lose train of though during the meeting. It’s a great way to make sure you cover everything you intended.
Tip #3: Prepare Invention History
History? What? ….
I don’t mean historical origins of your product/industry.
The Patent Attorney will need to know about the complete timeline of your invention. There are very serious statutory deadlines that need to be discussed regarding disclosure and/or sale of the invention.
Provide as much detail as you have about the following dates, including but not limited to:
- Date of the conception of the invention
- Any disclosures to any persons or entities outside of a nondisclosure agreement/confidentiality agreement
- Any offers for sale or actual sales to any persons or entities
- Any publications of your invention in a magazine, newspaper, online (e.g. Kickstarter)
This is also where you talk about any co-inventors, or people that you think might be co-inventors or contributors.
It’s important to bring this up EARLY on… it can compromise your patent if you’re not honest.
When you first conceived of your invention, were you employed?
It’s OK if you were – just let your Patent Attorney know what company and what your job description there was.
They will help you determine if there is a risk that your employer has rights to the invention.
If you used company resources and were on the clock, the invention is likely your company’s.
It’s very important to know up front than after you’ve spent hundreds of hours, and thousands of dollars trying to protect an invention that you will not be able to own.
Tip #4: Make Sure You Speak with a Patent ATTORNEY, not a Patent AGENT
There is a big difference between what a Patent Attorney can do, and what a Patent Agent can do. The biggest is that Attorneys can help give you legal advice, and agents cannot.
If you’re seeking to acquire a patent and you want to make money from it, you need Legal Advice, and that can only come from a Patent Attorney.
To become a Patent Attorney, the minimum requirements is:
- 4-year bachelor of science degree program (most have masters or higher) or course level equivalent
- 3-year law school curriculum, passing at least one state bar examination.
- Passing a separate patent bar exam.
Patent Agents aren’t required to go to law school, nor take the bar exam; therefore, they may not give legal advice.
The patent bar exam assures knowledge within the rules of how to get a patent issued, but it doesn’t teach how to assure a patent will stand up in court in front of a judge or jury if it were to be tested.
This is what a Patent Attorney can bring to the table. They know how patents are litigated.
To get a return on your investment, it’s to ENFORCE your rights to the invention.
A patent agent should know the rules of how to get a patent granted through the patent office. There’s nothing wrong with that. However, when inventors try to get a patent, they usually have a common goal in mind, which is to make money from the patent.
In order to make money with your patent, there is a whole HOST of things that must happen. When you get your patent first issued, no one is going to come rushing in the door asking to buy your product. There are rare exceptions, but for the most part, it doesn’t happen.
A Patent Attorney will guide you through the process of monetizing your invention (cease and desist letters, law suits, settlement, licensing negotiation, sale agreements, etc.).
You will need the Patent Attorney eventually, why not develop a relationship early on?
Please Note: We are not trying to bash patent agents here. They have a lot of merits and are great for certain aspects. In fact, we refer clients to patent agents regularly for specific cases.
Tip #5: Know who you are Meeting with
Don’t just agree to meet with any Patent Attorney with just any Patent Firm. You owe it to yourself to do some homework on the law firm before you meet.
Start with the website. The website has become a great place for law firms (or any business for that matter) to show off what they’ve got.
You can usually glean a lot of information on what the firm is all about.
Key things to look for on the website are:
- Attorney Roles: Who works there? Be careful to see who is an Associate, Contractor, Partner, Managing Partner, or Of Counsel. Brush up on the roles so that you know what they means when you get to your meeting.
- Technical Background: With patent law, it’s often times helpful to have Patent Attorneys with experience in the industry your invention is in.
- Past Clients: For the same reason as above, make sure that the firm has had successful experience working on patent applications in your industry.
- Publications: Any law firm worth their salt should be willing to show you the work they’ve done for other clients by means of what’s already available to the public. For Patent Attorneys, any published patent application is available for the public to see. Check them out!
You can learn a lot about a firm by looking at who is in it. Take a good look at what they have to say. Many attorneys are too humble to brag about their careers and accomplishments.
Biographies force it out of them.
Take in and appreciate the dedication that many of these Patent Attorneys have put into earning the credentials they have so that they can serve inventors like you.
Below I have featured our about page that shares our values.
You will notice that at Bold Patents are mission is to serve the bold and brave!
You will also notice how I have written 3 different books around the patent law and being a lawyer.
You can say I am a little obsessed and in love with this job. lol
Don’t take their word for it!
Look them up. Google the attorney’s name, and look at their social media channels. Behind every law firm, are actual, real people. And its very important that you see a law firm for what it is – a collection of people (Attorneys) who have a way of providing service to their clients.
Look them up on the USPTO website.
- Type in their first and last name
- Confirm they are a “Patent Attorney”
Get to know your attorney you will be meeting with and have at least one thing about their background that you are interested in or perhaps have something in common with.
It always helps to have a little small-talk to start the conversation, or as backup, in case the conversation for some reason stalls out.
Tip #6: Know Your Goals
It’s good to have goals, and to have them written down in a concrete way is even better.
If you haven’t set goals and started with the process of thinking big, then I suggest you start with my favorite book, Think and Grow Rich by Napolean Hill.
In addition, make sure the goals you create are SMART (specific, measurable, achievable, relevant, and timely).
Finally, focus on the high value vs. low effort items.
For example, protecting and bringing to market your visionary idea, in my opinion, has a lot of value and takes not too much effort when you hire the right patent attorney.
When it comes to patent protection, there are major implication and steps that should be taken to accomplish certain goals depending on what they are.
In my opinion, there are really two major goals for inventors:
- Start and grow a business using your invention as a way to prevent competition.
- License and/or sell your invention at the earliest opportunity.
Try to pick one or the other. Take some time, then decide. Yes, you can change your mind later – but what’s important is that you have a goal and better yet, a PLAN.
The plan is where a Patent Attorney can help. Going into a consultation knowing where you want to be is a HUGE advantage over someone going into a meeting blind. You will be able to drive the conversation and help answer questions with more conviction.
If you chose Option 1, then bring your business plan with you. Now you might be thinking:
“But wait, I don’t have a business plan for my invention!”
If that’s the case, follow the Business Model Canvas to get started.
It’s a one-page business plan, that’s simple to follow, and it works. The truth is that YES, it’s over-simplified, but it’s a GREAT way to get started and it’s better than nothing.
Your Patent Attorney will thank you for bringing your business plan.
While you may go over it in great detail, they will use it to provide you with referrals to other professionals and influencers they know to help you to reach your goals.
Tip #7: Send All Materials to Patent Attorney in Advance of Meeting
Sure, you’ve only got a 30-minute meeting on the calendar, but you need to maximize your time with them. But How?
By sending your Patent Attorney everything we have talked about thus far, you will stand a very good chance that they will review the material (even if it’s just skimming) in advance of your meeting, and you’ll have a 2-3X more productive meeting.
Make sure to send the email at least 2 business days in advance of your meeting. Any shorter time, you run the risk of them not having enough time to read and review prior to the meeting.
This tip alone could earn you upwards of 1 FREE Hour of Patent Attorney time!
To Recap – send all homework items from Tips 1-6, such as:
- Invention History
- Ownership Questions (Employment)
- Inventions Images/Sketches/Drawings
- Questions about the Patent Process Generally
- Patent Search Results
- Questions about the firm
- Questions about individual employees
- Goals + Timeline
- Business Plan
If you even sent half of this list in advance of your meeting with your Patent Attorney, you will gain their respect if nothing else.
You will have demonstrated that you are organized and are taking this very seriously and are worthy of their full effort in the meeting.
Tip #8: Bring EVERYTHING to the Table
Don’t hold back.
It’s not uncommon for inventors to get a little worried about people stealing their ideas.
And I get it, this is likely something you’ve worked on for years and you may not have told another soul about.
But you have to have faith in your Patent Attorney. You NEED to trust them.
Confidentiality is a requirement in the legal profession, especially as a Registered USPTO Patent Attorney.
All licensed attorneys have sworn oaths to keep all information gathered from any prospective client or actual client completely confidential. Here are the ethical rules under the American Bar Association and the USPTO specific rule:
*The American Bar Association (ABA) Rules of Professional Conduct provide that “even when no client-lawyer relationship ensues, a lawyer who has learned information from a prospective client shall not use or reveal that information…”ABA RPC 1.18(b)
*Confidentiality rules and ethics rules require that patent attorneys and patent agents must maintain all communications in confidence, even if they ultimately do not represent you. See 37 C.F.R. 11.106.
So, with the tips about what information to bring, and how to bring it – BRING IT! You need to be as open and honest about your invention as possible so that your Patent Attorney can give you the best legal advice.
Dishonest, half-cocked, and poorly prepared inventors get very little out of a legal consultation with a Patent Attorney.
It’s in your best interest, and in the best interest of your invention, to be honest.
Bring it on!
Tip #9: Be Fully Present
Whether your consultation is over the phone, video conferencing, or in-person, you need to be 100% tuned into the meeting in order to get the most value from it.
Do not to multitask. I’ve seen inventors noticeably typing on a keyboard while talking, or distracted by driving, walking, eating lunch, shopping, talking in a noisy room, or with poor cell service, or (and this is a true story) even while drinking.
It’s about 5-years old, but here’s a wonderful article about what to do (and not do) to be productive at meetings.
By following this tip-sheet, having done the homework, and having sent the information in advance, you will be able to fully show up to the consultation.
MAJOR SUB-TIP: Record the consultation.
There’s no way to capture everything that is said in these types of meetings, even the best note taker in the world can’t keep up…So, simply record it.
That way, you are not distracted by taking notes, and you can be fully engaged in your conversation with the Patent Attorney.
Tip #10: You are Being Interviewed Too
Whether you know it or not, the Patent Attorney sitting across from you is likely interviewing YOU to see whether they want to take you on a client just as much as you are interviewing them for their services.
So, be humble, respectful, and plain old nice.
I say humble, because it is often the case, that the inventor has been thinking and toiling on their invention for months or years and has a deep intimate understanding of the science and nuisances of the industry. Your Patent Attorney probably has not.
You’re going to get the best response from a Patent Attorney by being open to explaining your invention as if you’re talking to someone unfamiliar with your industry. Being pompous, arrogant, or assuming will get you nowhere.
Respect goes without saying. It’s also a reminder to acknowledge the dedication that a Patent Attorney has put toward learning the science, the law, and the patent code. They are deserving of your respect and attention.
Be nice to a Patent Attorney and make a friend forever. Even if you decide not to hire one for a project immediately, stay in touch with them.
The vast majority of Patent Attorneys, and Attorneys in general believe in the social cause to providing help to those in need.
A consultation with a Patent Attorney can be a daunting event, but it doesn’t have to be.
If you prepare yourself with questions for a Patent Attorney about your invention, and go in knowing what the Patent Attorney is going to look for, then you will have a much more productive consultation and have a much higher chance getting a patent for your idea.
To help you with the preparation, here’s a recap of the 10 Tips for inventonr who are meeting with a Patent Attorney:
- Tip 1: Do your OWN Diligence First
- Tip 2: Prepare Your Invention for Detailed Discussion
- Tip 3: Prepare Invention History
- Tip 4: Make Sure You Consult with a Patent ATTORNEY, not a Patent AGENT
- Tip 5: Know who you are Meeting with
- Tip 6: Know Your Goals
- Tip 7: Send All Materials to Patent Attorney in Advance of Meeting
- Tip 8: Bring EVERYTHING to the Table
- Tip 9: Be Fully Present
- Tip 10: You are Being Interviewed Too
What do you think of these 10 tips? Anything else you wish you saw?
Let me know in the comments below!
Want additional help?! Click here to book a free consultation today!
Legal Note: This blog article does not constitute as legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.