How To Find A Good Patent AttorneyBy Stephen Paul Gnass
I recommend that you begin the patent process by doing your own legwork on how to get a patent. Go to your local library and read David Pressman's "Patent It Yourself" book (McGraw-Hill) as well as any other books on the subject. This book is also available at NCIO's bookstore.
Although this research can be time consuming, if you familiarize yourself with the steps involved, you will have a good general understanding of the legal process involved, which will help you work better with your patent attorney, and ultimately help you cut your costs in the long run.
But, DO NOT patent it yourself. Why? Well, doctors don't operate on themselves, do they? And attorneys don't represent themselves. Ever heard of the phrase "attorneys that represent themselves have a fool for a client?" And the inventor will not fare any better if there is infringement on his patent later.
ARE ALL PATENT ATTORNEYS THE SAME?
If you've ever seen a "patent" document, the drawings and description appear to be purely technical, and the application process seems routine.
Yet the job of a patent attorney is truly an art form which involves skills most often gained through years of experience as well as innate talents and abilities.
Utilizing a bit of intuition, a bit of left-brain analysis, a bit of creativity, and a bit of detective work, a good patent attorney has to be able to figure out what your invention is and how it works from what you have said as much as from what you have not said. Inventors are often so intimately familiar with their product that they may not actually verbalize some of its key aspects: since they know the product inside and out, they may tend to feel that the key aspects are obvious to others too.
1. A good patent attorney should be able to figure out and understand all of the subtle nuances of your product and then be able to translate it into a format called a patent application.
2. A good patent attorney will make sure that your patent has "broad" claims, but not so broad that they're meaningless.
3. A good patent attorney will make sure that your patent has as many claims as necessary, but not claims that are "obvious" or "frivolous".
4. A good patent attorney will prepare your patent application with the idea of anticipating and winning any possible future infringement or litigation case in court.
5. Although most patent applications are rejected at least once or twice before being accepted, a good patent attorney will know what changes to make in order to get it approved.
In essence, a good patent attorney will make your patent a valuable intellectual property asset. This is why shopping for a good patent attorney is so important.
INTERVIEW PATENT ATTORNEYS
At this point, we recommend that you look for a good patent attorney to work with. There are patent "attorneys" and patent "agents". Although both must pass the same exam, only a patent attorney will be able to represent you in court for any legal matters or in the case of infringement. Look in your local business pages under the heading "Patent Attorneys". Call several of them and let them know you're looking for assistance in filing your patent. Ask them if they provide some initial free consultation time. Some do, some don't. If they're busy at the time, make an appointment for an initial consultation about their services, fees, etc.
There are a few areas you'll want to find out about:
PATENT ATTORNEY FEES AND BILLING TERMS:
Patent fees depend on the complexity of the product that is being patented. For example, a product in the biotechnology field or consumer electronics will take longer to patent due to the nature of the work involved. In some circumstances, a technological patent has taken as long as 20 years to be issued! Whereas, a novelty item like a new type of cup will be fairly easy and quick to patent. By giving the patent attorney a general idea of what your product is, you should be able to get a rough estimate of the costs involved.
The main point is that you don't want to start a relationship with a patent attorney being blind to the costs, and find yourself paying thousands of dollars more than you didn't expect to pay. By asking the questions, you'll be able to make an informed decision and know what you're getting into.
1. What is the average cost for a completed patent application from start to finish. What's the low, and what's the high? And what does this price include? Very often, patent attorneys bill for their own time at an hourly rate (average $200-300 per hour) in addition to fixed patent office filing fees (about $750 for the initial filing). They may also charge for the cost of the mechanical drawings if they need to hire an outside firm. Be sure to let them know if you've already done a preliminary patent search so that he doesn't duplicate your work.
2. Are there any "out-of-pocket" expenses that will be charged? If so, what are they, and how much is the average out-of-pocket bill for a patent? It is normal for law firms to charge for out-of-pocket expenses like xeroxing, filing fees, long distance telephone calls, and the time billed for legal assistants.
3. How do they bill? It usually takes at least 18 months to 24 months for a patent application to be granted. How much does the patent attorney require for a deposit, and do they take payments throughout the18-month+ process? Will they work out a payment plan with you?
We recommend that you try to determine all of the possible costs upfront, so that you know what you're dealing with in terms of the total costs for your patent. Otherwise, you'll have an open-ended relationship which can very easily add up over a short period of time.
If you feel that the attorney doesn't answer your questions, isn't open with you, or won't give you satisfactory explanations, chances are that you may have difficulties or misunderstandings with this attorney once you begin a business relationship.
We recommend that you take this initial interview into consideration in your selection of a patent attorney. However, it's also true that people can't always be judged on just one meeting (it may just have been a bad day the day you called). So, you might be willing to call back and give the patent attorney another chance and see whether you get a difference interaction the second time.
Since the cost of a patent attorney usually runs between $2,000 - 10,000, depending on the complexities of your product, selecting a good attorney that you feel comfortable with is crucial. Ask them about their experience level, and request a list of several satisfied clients that you can call and speak with to determine their competence. Then call the referrals and ask them questions about the attorney's service, quality and professionalism.
Once you've gone to all of the attorney interviews, and reviewed the results of your meetings and research, you'll be able to narrow down your selection to two or three attorneys. Call them to let them know you'll be making your final selection and would like to schedule another appointment. After you've met with them again, you should be ready to make your decision.
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