what should i have ready before talking to a patent lawyer

by Dr. Rogers Aufderhar PhD 4 min read

Research on the topic told me that there are a few things that you need to know before you consult with a patent attorney. Primarily, a patent attorney or patent agent must have a degree in a technical discipline like engineering, chemistry, pharmacology or similar. This is important to understand the technical aspect of the inventor’s invention.

Prepare Your Invention For A Detailed Discussion
Patent attorneys, nor the USPTO, require you to have a fully operational prototype or even good drawings, and they are good at deciphering the “chicken scratch on the napkin” moments, but the more that you can provide, the smoother the process will be.
Apr 30, 2020

Full Answer

Do I need a protytpe before talking to a patent attorney?

Jul 31, 2018 · But if you’d like a bit more insight into how to work with a patent lawyer in an effective manner, here’s a rundown of what your priorities should be before you walk through the front door. 1. Have clear-cut goals for what you want to accomplish with your invention.

How can a patent attorney help you get a patent?

Mar 13, 2018 · While prototypes are great to have for a patent consultation meeting, they are absolutely necessary. Generating some sketches done on paper, renderings created with 3d modeling software, or other ways of graphically depicting your idea will be immensely helpful for a patent attorney while learning about your invention.

What should be included in a patent application?

Understand that you are thinking about hiring a patent attorney so that you don't have to complete this process yourself. Understand the process with your attorney. Have realistic expectations for your invention. Patent law is complicated, so complete your due diligence when talking to a patent attorney. If you want to protect your inventions, whether it's through obtaining patent …

What does it take to pass the patent bar?

Mar 02, 2021 · Ask About The Price – naturally, the most important thing is the price. This is something that will depend on your budget, as well as what you want to apply for. Keep in mind that different patents and licenses can vary in price, …

image

Can a patent lawyer steal my idea?

However, patent lawyers are bound by ethics and professional responsibility requirements. Stealing an idea would be a serious breach of duty for a lawyer that can expose him or her to punishments from the bar, and the original inventor would likely be able to sue for theft.

What does a person do before applying for a patent?

What to do before filing?
  • Keep your invention secret until the date of filing. ...
  • Before discussing your invention with anyone, have them sign an NDA (Non-Disclosure Agreement) ...
  • Talk to a patent attorney. ...
  • Study the patent application process. ...
  • Study the competitors' products and patents. ...
  • Study the costs.

What are the 3 requirements needed to get a patent?

Under U.S. patent law, an invention is patentable only if it meets the following four requirements, which are discussed in more detail below: The invention must be statutory (subject matter eligible) The invention must be new. The invention must be useful.

What are the 5 key stages in the procedure to obtain patent?

These five steps will help you plan out the patent process as you seek to protect your invention.
  • Understand Your Invention. The first step in how to get a patent is to understand your invention. ...
  • Research Your Invention. ...
  • Choose the Type of Protection. ...
  • Draft Your Patent Application. ...
  • Wait for a Formal Response.

What are the 3 questions that must be addressed to determine if an idea is patentable?

Eligible Patents Need Utility, Novelty, and Non-Obviousness:

In reading any patent application, it needs to be apparent to the USPTO how the invention meets (at bare minimum) these three criteria before it will grant a patent.
Oct 30, 2018

What are the 4 types of patents?

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.
May 2, 2022

What can not be patented?

What cannot be patented?
  • a discovery, scientific theory or mathematical method,
  • an aesthetic creation,
  • a scheme, rule or method for performing a mental act, playing a game or doing business, or a computer program,
  • a presentation of information,
•
Dec 14, 2020

How much does a patent cost?

Complex process

“To get a patent application on file, a ballpark figure would be about €5,000. The Patent Office will cost you €50 or €60, the fee they charge to take the piece of paper in at the door, the €5,000 is to prepare the piece of paper that goes in the door.
Jan 6, 2017

Can I patent an idea without a prototype?

Many inventors wonder if they need a prototype prior to patenting an invention. The simple answer is “no'. A prototype is not required prior to filing a patent application with the U.S. Patent Office. While prototypes can be valuable in developing your invention, they can also be costly.

What is a poor man's patent?

A poor man's patent is essentially writing out a description of your invention and then mailing that written description to yourself. This postmarked envelope supposedly acts to create the date of your invention as the date this written description was postmarked.

How can I patent my idea for free?

Filing Process

You can file a patent online using the patent office's EFS-Web service. The USPTO's website includes detailed information on what should be in your application on its "General Information Concerning Patents" page under Inventors Resources and Guidance.

What is the first step to getting a patent?

To obtain a patent, follow these steps:
  1. Work on your invention and document the entire process. ...
  2. Confirm that you have an invention, not merely an idea. ...
  3. Consider whether your invention is commercially viable. ...
  4. Hire a patent attorney. ...
  5. Submit a provisional patent application. ...
  6. Submit the application.

What Technology Can Be Patented?

A patent grants a person or business an intellectual right to an invention. Historically, inventions have been tangible objects such as everything from a new kitchen appliance to a dog pooper scooper. Technological advancements in digital form are changing the face of patents.

What Are The 3 Types of Patents?

A patent is a type of intellectual property right that protects a person’s invention for a determined period of time against others who may want to try to make, use, or sell the invention. Nearly everything that you use on a daily basis has been patented at one time or another. A good example is medications.

What are Internet Intellectual Property Infringement Claims?

Join Paul & Paul's Philadelphia intellectual property lawyers as they discuss internet intellectual property infringement claims.

The Four Types of Intellectual Property

Join Paul & Paul's Philadelphia attorneys as they discuss types of intellectual property: patents, trademarks, trade secrets, and copyright.

Intellectual Property Law: How IP Lawyers Can Help You With The Complex Aspects of IP Law

Here's a simple explanation of how to find an intellectual property lawyer, why you need one, what they do for you and what the costs are.

How Long Does a Patent Last?

We’ll show you how long patents last, why they expire early, and what happens after the patent is gone.

The Top Ten Benefits of Registering Your Trademark With the USPTO

A trademark is considered an important asset for any business. Learn more about the benefits of registering a trademark or contact the Philadelphia patent attorneys at Paul & Paul today!

1. Have clear-cut goals for what you want to accomplish with your invention

It’s much easier for an attorney to respond to goals than it is to complete legal services in isolation. Context is everything.

2. Be sure you have an in-depth understanding of your product, the manufacturing process, and its applications

First of all, ensure that you can explain how to make and use your product. If you can’t, then you’re likely still at the idea stage, in which case you don’t have anything patentable just yet.

3. Ask about the costs of obtaining a patent

Unless your attorney only passed the bar exam yesterday, they should have data on hand that covers how much it costs to get a patent. If transparency from a client is important for attorneys to do their best work, it is equally important for your patent attorney to be upfront about the cost of their services.

4. Ask your attorney if they can help you conduct a cost-benefit analysis for your product

If your attorney has developed an understanding of what your goals are and has given you guidance as to how much obtaining a patent will cost, they should be able to help you understand if applying for a patent makes sense.

Is there anything wrong with shopping around for a patent attorney?

Having said that, you need to be careful how you do it or you run the risk of alienating competent, experienced patent attorneys.

Do patent attorneys need confidentiality agreements?

You do not need a confidentiality agreement when speaking to a patent attorney or a patent agent as a client or a prospective client, and in fact, most patent attorneys and patent agents do not sign confidentiality agreements. The federal regulations already in place are stronger than any confidentiality agreement anyway.

Do patent attorneys sell products?

You really need to expect to pay for services rendered. You are going to a professional to seek professional assistance. Patent attorneys and patent agents do not sell products, they sell services, which means all they have to sell is time. Time is money, quite literally.

Who is Gene Quinn?

Gene Quinn is a Patent Attorney and Editor and President & CEO of IPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting ...

Questions Particular to Patent Attorneys

Do you have technical experience or technical background, such as software, life science, or mechanical engineering?

Questions to Ask in General

Is your firm highly rated, such as receiving an AV-Rating with Martindale-Hubble?

Some Things to Consider When Interviewing Patent Attorneys

A confidentiality agreement is not needed. Federal law requires that patent attorneys and agents keep all information and material related to clients' (or prospective clients') inventions confidential. These federal requirements are more stringent than a confidentiality agreement would be.

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?

Can an agent give legal advice?

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.

What is a design license?

Unlike utility ones, a design license can also cover how the item looks like.

What is a patent attorney?

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 patent). If you’re looking for advice about protecting your own company’s inventions, look for a firm (or a group within a firm) ...

Is a patent law firm a long term relationship?

A tech company’s relationship with a patent law firm is often a long-term one. That’s why it’s important to do your due diligence to ensure you’re hiring the right attorney for your intellectual property needs.

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. ...

What does a law firm's website advertise?

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).

What if you wish to consult with a few different patent attorneys before engaging the right one?

What if you wish to consult with a few different patent attorneys before engaging the right one? The State Bar of California has issued a written opinion stating that even if you’re not a client, an attorney may have a duty to keep your communications confidential if the attorney’s words or actions “induce in the speaker a reasonable belief that the speaker is consulting the attorney, in confidence, in his professional capacity to retain the attorney or to obtain legal services or advice.” (Formal Opinion No. 2003-161).

What is NDA in law?

In most cases, a well drafted non-disclosure agreement (NDA) is a prudent way to protect your idea as you’re talking to service providers. Attorneys, however, are governed by strict rules and codes of professional conduct relating to communications with clients (e.g., see California Evidence Code Section 952 , California Rules of Professional Conduct Rule 3-100, and California Business and Professions Code Section 6068 ).

What is a NDA?

In most cases, a well drafted non-disclosure agreement (NDA) is a prudent way to protect your idea as you’re talking to service providers.

What to ask a lawyer about a case?

An important question to ask a lawyer is what the strategy for your case will be and the outcome the lawyer expects. You’ll want to get details on what kind of procedures to expect. Ask how long it will take for the entire case to be resolved. Discuss the legal strategies that will be used. Find out if your attorney will attempt to settle and if mediation or arbitration are options. Think about the answers and if you are comfortable with them. Maybe you want to avoid a trial at all costs but your attorney really wants to just go to trial, or perhaps you have no intention of settling and want your day in court. It is important that your lawyer’s strategy lines up with your needs.

What is a meeting with a lawyer?

Meeting with a lawyer for an initial consultation is generally not a chance to ask legal questions that are in depth, but is instead an opportunity to get a sense as to whether this lawyer is the right one to handle your case. Use this meeting to help you decide which lawyer will be the best one for your case.

Why is it important to meet with a small business attorney?

Meeting with a small business attorney is an important way to get your business off to a good start and minimize future risks. Here are questions to ask at your first meeting.

Why do lawyers offer free consultations?

Most lawyers offer a free consultation so that you have a chance to determine if he or she is the right person for you. Going to the first meeting with some simple questions can help you ensure you find the right person for the legal help you need. You will not get much legal advice at this consult since it is not meant to resolve your legal ...

image