questions to ask when considering a patent attorney

Questions Particular to Patent Attorneys

• Do you have technical experience or technical background, such as software, life science, or mechanical engineering?
• Who is your typical client? ...
• Are you board certified in intellectual property by your state bar?
• Do you provide extranet or portal access to my case, such as billing, documents, and deadlines?
• Have any of your patent or trademark applications been subject to litigation?

Full Answer

How do I choose a patent attorney?

Tips to Help You Choose a Patent AttorneyYou Need a Patent Attorney. When partnering with an attorney to help you with your patent application, it is important that you only look at patent attorneys. ... Look at Expertise. ... Don't Be Afraid to Shop Around. ... Find Out if The Patent Attorney Handles Litigation.

What questions should I ask an IP lawyer?

10 Questions for Your Intellectual Property LawyerDO I REALLY NEED AN IP LAWYER? ... PATENTS, COPYRIGHTS, TRADEMARKS, TRADE SECRETS—WHAT DO I NEED AND WHEN? ... WHAT IS YOUR BACKGROUND? ... ARE YOUR REGISTERED WITH THE USPTO? ... HAVE YOU LITIGATED IN PATENT-HEAVY DISTRICTS? ... I BELIEVE MY INTELLECTUAL PROPERTY HAS BEEN STOLEN.More items...•

What to consider before applying for a patent?

Five Important Things to Consider When You File a Patent...Know Why You're Doing This. ... Use the Right Filing Method for Your Situation. ... Work Closely with Your Patent Attorney. ... Review the Draft Application Before It's Filed. ... Know Your Deadlines and Timing.

How does a poor man's patent work?

The theory behind the “poor man's patent” is that, by describing your invention in writing and mailing that documentation to yourself in a sealed envelope via certified mail (or other proof-of-delivery mail), the sealed envelope and its contents could be used against others to establish the date that the invention was ...

What are the 3 criteria required to file a patent?

Patent applications: the three criteriaNovelty. This means that your invention must not have been made public – not even by yourself – before the date of the application.Inventive step. This means that your product or process must be an inventive solution. ... Industrial applicability.

What are the 4 types of patents?

Learning how to use each kind of patent application will help any inventor better utilize the U.S. Patent Office to protect his or her invention....There are four different patent types:Utility patent. This is what most people think of when they think about a patent. ... Provisional patent. ... Design patent. ... Plant patent.

Should you disclose your idea before applying for a patent?

It is important to file a patent application before publicly disclosing the details of an invention.

Can you inherit a patent?

Any valid patent, trademark or copyright can be inherited. They will go to a designated heir if included in a will, or benefit heirs if included in a trust. They can also go through probate if the owner dies intestate.

How long does it take for a patent to be approved?

In the United States, it takes an average of 24 months from the filing of a patent application to get a patent.

Is it worth getting a patent?

The primary benefit of a patent is the right to stop your competitors from selling the same product. You can become the sole supplier of the product. Based on the law of supply and demand, lowering the supply allows you to sell your product at a higher price. If sales are strong, then the patent is absolutely worth it.

When should you not get a patent?

U. S. law provides you will lose your patent rights if you sell, offer for sale, publish, or publicly use your invention more than one year before filing a patent application on that invention.

When should we apply for patent?

You must file within one year of the first public disclosure of your invention, but it is too early to file if you cannot explain how the invention will be implemented. Previous: Is your invention valuable?

What are the 3 types of patents?

What kind of patent do you need? There are three types of patents - Utility, Design, and Plant. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof.

Is it hard to get a patent approved?

If easy means getting a patent without any rejections, then only 11% of utility nonprovisional patent applications get allowed without any rejections according to this Yale statistical study. So getting a utility patent will not be easy in most cases.

What to look for in a patent attorney?

Look for a patent attorney who has significant experience handling patent filings. Here are some guiding questions to find out about their experience.

How to pass the patent bar?

In order to pass the patent bar, an attorney must possess a degree of technical experience, as demonstrated by holding at least a bachelor’s degree in a technical field or some equivalent. But not everyone has the same technical background. You want an attorney who understands the technology you’re developing.

Why is it important to hire an attorney for intellectual property?

That’s why it’s important to do your due diligence to ensure you’re hiring the right attorney for your intellectual property needs. Most patent attorneys specialize in either patent prosecution (the process of obtaining patent rights for inventions) or patent litigation (handling legal disputes about whether someone is infringing an existing ...

What is legal experience?

LEGAL EXPERIENCE. A law firm’s website might advertise intellectual-property services — but that doesn’t always mean that they have actual experience advising tech companies, or with successfully prosecuting cases before the U.S. Patent and Trademark Office (USPTO). Look for a patent attorney who has significant experience handling patent filings. ...

Do patent attorneys charge low fees?

Be wary of patent attorneys who charge very low fees! The cost savings might tempt you, but it’s typically a red flag for an attorney who’s inexperienced or can’t retain clients. Instead, look for someone who offers solid services at competitive rates.

Can an attorney reveal their client's name?

Some attorneys will be understandably hesitant to reveal their clients’ names. But even if confidentiality is at stake, the way they respond to a request for references can reveal a lot about their working style — and you want to work with somebody who is honest and upfront in their communications.

Is patent attorney an investment?

While strong patent counsel can get expensive, hiring an attorney is also an investment in your IP assets. As such, tech companies should build this into their annual budget.

What to do if you don't have a law degree online?

So, if there is no confirmation of the degree online, you can ask the attorney about their education, as well as what law school they attended. If someone is hesitant to show you their diploma, opt for a different person.

Is it easy to get a patent?

Getting a patent on an invention has never been easy – especially since it requires a lot of time, investment, and involvement right from the beginning. Of course, your hard work will pay off in the future, however, is there something you can do to make the entire process easier?

Is a patent attorney an agent?

Ensure That it is an Attorney Not Agent – the very first thing you need to determine is whether the person is a patent attorney or agent, as well as whether they are registered with USPTO. If you opt for an agent, you should know that they cannot give you legal advice, nor represent you in court , which can be a major hindrance. Additionally, these agents do not usually have a degree from law school.

Can my Invention Actually Be Licensed?

And, since it is difficult to determine, one of the best ways to solve the mystery is to ask your lawyer. She or he will know exactly whether or not your invention can be registered.

What to ask a lawyer about patents?

When you talk to a lawyer, you get a sense of what they are interested in and what makes him or her curious. You can also ask about the patents they've written in the past. Patent lawyers write a lot of patents, and not all of them are in the field they have the most education in.

How to make sure your patent is written?

Patents are expensive and important. One of the best way to make sure that your patent is well written and on budget is to hire the right lawyer. These four questions will help make sure your patent attorney has the right education, the right team, the right experience and is someone you can work with.

How Do You Work With Your Clients?

Writing a patent with a lawyer is a collaborative process and, like any collaborative process, requires communication. What is the lawyer's patent process like? How often do they meet with their clients? Perhaps you want a lawyer that will take all your notes and draft a patent application for your review. Or maybe you are more comfortable with the lawyer reviewing your notes, coming up with a strategy for your approval before writing the bulk of the specifications.

What is a former patent examiner?

However, a former examiner turned patent lawyer is not someone who will use their relationships with the current examiners to give you an edge. He or she is simply someone with insight into what it is like to respond to a patent application and will write your patent accordingly. Patents are expensive and important.

What does a patent lawyer do?

The patent lawyer works for you. You are hiring them to manage a complex project that may involve a lot of people. You need a lawyer who can manage writing the patent and be a technical and legal expert. And, you want to find out early if you and the attorney share the same ideas and processes.

What is an inventor who knows about patents and understands the best way to use them?

An inventor who knows about patents and understands the best way to use them has a huge advantage in protecting their invention.

How long does it take to register a trademark?

Registering a trademark can take anywhere from several months to a couple of years. Increase the chances that your registration will go quickly and smoothly with these tips.

What does it mean when an attorney thinks a patent is important enough?

The answer shows several things: If the attorney thought the claim (the claims define the extent and scope of the protection of your patent) was important enough and strong enough for him to write the patent on that basis, he should feel he could successfully defend a patent based on these claims in court.

How important is it to defend a patent?

If the patent is written really really well, no one (or few) will challenge it. They’ll see from the patent itself that it will be tough to win in court. If the patent is sloppy, carelessly, or poorly written with gaping holes in ...

Do patent attorneys win in court?

In fairness, not everyone who is right wins in court. And some wins or losses have nothing to do with justice. But a patent attorney has so much control over the whole process — figuring out what claims are (if any), if they are valid and defensible, how to define them in writing so they are defensible in court, and how to litigate the defense of the claims as he has written them… he should seldom lose in court, if ever.

Is patent search more expensive?

In the interest in being fair, deeper searches just take more time. If you are General Motors a patent search will be more expensive as it will necessarily be more thorough. If you may or maybe not bring your product to market there would be little reason to do a very thorough (= very $$$$) search up front.

Do attorneys give out client names?

Some attorneys may be reluctant to give out client names, but you should ask this to see how they handle the question. (The hidden question within the question.)

Does an attorney do searches?

Your attorney most likely doesn’t do searches himself, so ask is there an hourly rate for the searcher company?

Does a lousy attorney write a lot of patents?

This will give you an idea of his experience. Remember, experience isn’t king: a lousy attorney may write a lot of patents and they’ll all be lousy. Even though he wrote a lot of patents this alone doesn’t make him good!

What happens if a patent attorney does not own a patent?

When a patent attorney that does not own a patent, they don’t care how much a client spends on a patent. When your patent attorney does own their own patent, they will be much more careful about how they charge you. They will make sure to be extra careful not to overlook anything or make mistakes because they fully understand the consequences to a deficient patent. A great patent attorney not only understands patent law and has an engineering degree, a great patent attorney understands inventing, running a business, and budgeting. The best way for a patent attorney to gain this understanding is to experience starting a business and investing in their own patent. So if you are looking for a great patent attorney, the first thing you should ask them is “Do you own a patent?” If the answer is no, move on to the next candidate. If the answer is yes, rest assured, you have found a great patent attorney.

Do patent attorneys own patents?

If you ask many patent attorneys if they have ever filed a patent application for themselves or own any patents, most will answer no. Now, attorneys are taught to think quickly on their feet and may give you a great sounding explanation why.

What is the equivalent of going to a top 14 law school?

Because we all know that when it comes to reaching the summit of the legal mountain — where all the good entry-level (and later) opportunities are — going to a top-14 law school is the equivalent of coasting up the mountain in a climate-controlled high-speed gondola.

Is patent law a lonely profession?

Law can be a lonely and difficult profession, and there are definitely times where the best advice we can give someone is that it probably isn’t the profession for them. But when someone has what it takes to advance to the next step towards a career in patent law, it is our job as patent lawyers to share some encouragement and a dose ...

Legal Experience

Technical Experience

• In order to pass the patent bar, an attorney must possess a degree of technical experience, as demonstrated by holding at least a bachelor’s degree in a technical field or some equivalent. But not everyone has the same technical background. You want an attorney who understands the technology you’re developing. For example, if your invention deals w...

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Hiring The Right Patent Attorney For Your Business