what to ask a patent lawyer

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? Do you represent small and large businesses? Do you work with start-ups? Do you work with...
• Are you board certified in intellectual property by your state bar?

Full Answer

What are the most important questions to ask a patent attorney?

Let’s take a look at the most important questions that you should ask a patent attorney: Can my Invention Actually Be Licensed? If you did some digging, you know that you cannot register physical events, the laws of nature, as well as abstract inventions and ideas. Though these restrictions might be simple enough, it is, in fact, quite complex.

How can a patent attorney help you get a patent?

Your patent attorney can assist you with this and will help you draft your patent application as broadly as possible, but it is also very helpful for inventors to do this as well. The standard that an invention must complete before filing a patent application, is that they must “enable” another skilled in the art to make and use their invention.

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

Similarly, if you are created a mechanical device you do not have to have a fully functioning protytpe before talking to your patent attorney. Instead, you may have simple drawings showing the different parts of your invention and how they interrelate.

What should be included in a patent application?

Your patent application will include Figures, therefore it is important for an inventor to draft figures showing the most important features of their invention. The figures do not have to be professionally created, and may be drawn by hand, black and white pictures, computer assisted drawings, etc.

How do I interview a patent attorney?

Below are 4 questions to ask a patent lawyer before hiring them to do the job. Let's begin!...Questions To AskWhat's Your Legal Experience?What's Your Technical Experience?Can Your Patent Lawyer Explain Their Work Process?Can You Provide References?

Can patent attorney steal your 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 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.

What is the main purpose of patent attorneys?

The patent attorney is the central point of contact for the legal protection of industrial property rights. Patent attorneys advise clients on inventions, designs, trademarks, know-how as well as on how to protect software products and plant varieties.

Can someone steal my idea if I have a patent pending?

As soon as you file a patent application with the U.S. Patent and Trademark Office (USPTO), your invention is "Patent Pending." Once your application is submitted, nobody can steal, sell, or use your invention without your permission.

How much does a patent cost?

A patent can cost from $900 for a do-it-yourself application to between $5,000 and $10,000+ with the help of patent lawyers. A patent protects an invention and the cost of the process to get the patent will depend on the type of patent (provisional, non-provisional, or utility) and the complexity of the invention.

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.

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.

How tough is it to get a patent?

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 is an initial interview for a patent attorney?

In addition to answering your questions, the purpose of the initial interview is to provide the registered patent attorney with a description of your invention, information regarding public disclosure of the invention, and information helpful to the attorney in drafting a patent application.

What do you call a patent lawyer?

In the United States, a practitioner may either be a patent attorney or patent agent. Both patent attorneys and patent agents have the same license to practice and represent clients before the United States Patent and Trademark Office (USPTO).

How do I know what kind of lawyer I want to be?

Here are a few questions to help you determine what type of law would be a good fit for you:How Much Do You Like to Argue?How Motivated You Are by Money?How Much Control Do You Need Over Your Work Life?How Much Interaction Do You Need With Other People?What Do You Like to Do?

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?

Do patents bring wealth?

Most individuals believe that registering their invention can bring wealth, but, this is not the case. Patents are, in fact, completely invaluable. And, by various studies, over 95 percent of them never make any revenue.

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.

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.

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 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 is utility patent?

Utility patents are among the valuable assets in the world. Unlike other forms of intellectual property protection, they have numerous formal requirements and can be very expensive to get. For new inventors, pursuing a utility patent can be daunting. If, however, you take it one step at a time, you too can receive an issued patent for your invention.

What is the process of filing a patent?

Filing a patent is a complex process, and your lawyer will lead a team of professionals. It's most likely that your lawyer will have junior patent attorneys or patent agents that work for them. Ask who he or she thinks will work on your patent and why they chose them.

Can you patent an idea?

Under U.S. law, you cannot patent an idea. Understanding how the law differentiates ideas from inventions is a great way to learn some of the core tenants of patent law. Sep 16, 2020 · 5 min read.

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. ...

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.

How long does it take to become 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.

What is the patent bar exam?

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.

Do patent agents have to know the rules?

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.

Can you articulate your invention?

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.

Can a patent attorney monetize your invention?

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.).

What happens if you disclose your invention?

3- If You Do Disclose Your Invention, Record the Dates. If a company does publicly disclose an invention, it is important to record the dates that their invention was disclosed on. That is because the one year bar date is a hard deadline. If your company obtains a patent, it may later be invalidated if the patent was filed one year ...

Why is it important to record the date of an invention?

If your company obtains a patent, it may later be invalidated if the patent was filed one year and one day after your disclosure date.

Do you need a prototype to patent an invention?

Therefore, a fully functioning prototype of a company’s invention is not necessary before filing a patent. As such, if you are designing a mobile application for your patent, it is not necessary to have the web application fully functioning or even segments of code before talking to a patent attorney. What would be necessary, is that another could write the code or reverse engineer similar code based on what is disclosed on your invention.

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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Work Process

Cost

References

Hiring The Right Patent Attorney For Your Business