Patent attorneys are extremely important. Their impact is felt on every innovative industry around the world, from life-saving vaccines to air travel. As an inventor, hiring a patent attorney is one of the most important decisions you will make as you will need their help to achieve your goals and dreams.
It goes without saying that some patent attorneys are better than others. It is far more important that you focus on hiring an inventor-friendly patent attorney than someone who lives near you.
Here are 7 signs you’re working with a great patent attorney.
1. They encourage you to research whether your invention already exists.
Only new inventions are eligible for patent. If you don’t google your invention, how can you be sure it’s really new? That is not possible! This is one of the many reasons why market research is an absolute must. Getting to know the landscape of similar products will help you decide whether or not to move forward with intellectual property.
Don’t be afraid to find out that your invention already exists. Trust that you will have other ideas. Use what you find to refine, improve and/or redesign your original idea.
2. They discuss the importance of conducting a research on the state of the art.
Simply put, state of the art is proof that your invention already exists. After you search the marketplace for your invention, you should try to find references to your invention in published patents. (Prior art isn’t limited to patents, but they’re a good place to start.)
Does your patent attorney have to perform the prior art search? New. In my view, there is a clear conflict of interest. (If you find out that your invention has already been patented, you no longer need their services.)
Teach yourself how to conduct a preliminary search for the state of the art. Depending on what you find, consider hiring a third party — an independent company or individual — to help you expand and narrow your search.
3. They don’t play the fear card.
Inventors are already paranoid that someone is going to steal their idea. Putting fear in your head is a way to make you act faster than you would otherwise, which does you no favors because a good business decision is not made out of fear.
“Patent attorneys sometimes do too well to warn inventors about the risks of early disclosures. Done badly or overzealously, this good warning can certainly come across as instilling fear — even if it’s not the attorney’s intent,” explains patent attorney Jake Ward. from Ward Law Office.
“For this reason, I usually advise my inventors about these risks in terms of ‘trust’ and understanding that you have to trust and surround yourself with the right advisors and professionals if you want your invention to get to the world.”
You look up a patent attorney who calmly discusses the pros and cons of applying for intellectual property.
4. They give you the total cost to issue a patent.
The labor involved in preparing an application is only the beginning of the costs associated with obtaining a patent. After a patent examiner has assessed your application, you will receive so-called ‘office actions’. These are essentially reasons not to issue the claims in your patent application as written. To overcome these office actions, your patent attorney must negotiate with your patent examiner.
If your patent is granted, maintenance costs will be payable three and a half, 7.5 and 11.5 years after the patent is granted. (This only applies to utility patents.)
Nobody likes surprises. You should be able to budget accordingly.
5. They handle provisional patent applications differently from non-provisional patent applications.
By filing a Provisional Patent Application (PPA), you can describe your invention as “patent pending” for a year while researching its marketability. You are not required to include claims – which define the limits of your legal rights and must be written in a very specific way – in a PPA. Still, there are patent attorneys who will tell you that preparing a PPA is no different than a non-provisional patent application. Independent inventors can’t afford to patent every invention idea they have, so this is impractical advice at best.
6. They conduct office campaign interviews.
Responding to office promotions can get extremely expensive. The best strategy for getting a patent on time, let alone on time, is to have your patent attorney interview the examiner about their objections. Without speaking one-on-one, the process will likely drag on.
7. They show no ads.
Like any service-oriented business, patent attorneys who do a good job depend on referrals — not advertisements.
Inventors are easily abused. You wouldn’t expect to be exploited by your patent attorney, would you? Unfortunately it happens. As a co-founder of the inventRight coaching program, I’ve heard too many horror stories to pretend otherwise. To be fair, I’ve personally worked with, know and regularly hear about truly remarkable patent attorneys.
If you believe your patent attorney has taken advantage of you, please contact them first to resolve the matter. If that doesn’t deliver the story you’re looking for, I suggest you contact the Attorney’s Bar Association to file a complaint. You can also file a complaint with the USPTO’s Office of Enrollment and Discipline†