Patent attorneys are important in helping you protect your IP from current and future competitors. Some patent attorneys are better than others. A great patent attorney will meet these 7 criteria.
1. They encourage you to research your invention in the marketplace.
As an inventor you probably have a lot of experience in your industry. Dental tools, manufacturing, semiconductor, etc. However, how sure are you that your invention is new? Understanding the market is critical to know if your invention is new. A professional patent search will of course help you know if there are other inventions that are too similar to yours, but a good patent attorney will encourage you to do your own research first. Often inventors can save themselves a lot of money by doing an internet search first. If you find something similar, it can help you make improvements or redesign your invention.
2. They discuss the importance of performing a prior art search.
Prior art is evidence that your invention already exists. A prior art search is a more extensive search to identify any published reference to inventions with similarities. A good patent attorney will be honest with you about the search results. If they tell you there is nothing like it, this raise red flags. A search
will include anything that is even remotely close to your invention. Your patent attorney will help you understand how this will influence your patent application. A proper search will also provide useful information for writing the claims for a patent application. This can decrease your future cost and time of working with the patent office to grant you a patent.
3. They will not use fear to persuade you.
Inventors worry that someone is going to steal their idea. Fear can be used to persuade you to apply for a patent quicker. However, fear is not a good basis for quality business decisions. A quality patent attorney will provide you with the pros and cons of filing a patent application. Patents are not always the right option for a business. A good question to ask your attorney is “When would I not want to file a patent application?”
4. They provide you with the total cost of getting a patent to issue and beyond, not just the initial application process.
No one likes surprises. Many inventors start the application process expecting the initial cost of the application to be the total cost. However drafting an application is just the beginning of the costs associated with securing a patent. Once you file your application, a patent examiner will review your application. They will perform their own search and send out an “office action”. An office action details reasons the USPTO will not grant a patent yet. This is very normal. In fact the average application will have approximately 3 office actions. Your patent attorney will need to negotiate with the patent examiner. These office actions are almost always at an additional cost. Other costs include issue fees and maintenance fees. You will need to budget accordingly. Know what you’re getting into and what your patent will cost you.
5. They advise when a provisional patent application is the right choice for you.
A provisional patent application is a temporary application (provisional means temporary). Choosing whether to start with a provisional or non-provisional patent application is an important strategic decision. A provisional application is initially cheaper and quicker and allows you to have a patent pending status for one year. However, over time, filing a provisional application first, then a non-provisional application will cost you more money, and more time to receive a patent. Find out which one is the right strategy for your business.
6. They conduct interviews for office actions.
Responding to office actions can become expensive and time consuming. The best strategy for getting a patent approved in a timely manner is by having your patent attorney interview the examiner about their objections. Without speaking one-on-one, the process is likely to drag on. During an interview, your attorney can properly handle any misunderstandings, differences of opinion, and determine a path to move forward. A good patent attorney will be calm, patient and able to negotiate on your behalf. In the undesirable event that the examiner will not grant a patent, it can become clear during this interview, and will save you from spending more money negotiating when an appeal or other strategy is more likely to yield a granted patent.
7. They discuss strategies that make sense for your business.
This invention is yours, and needs to serve you. Why do you want a patent? More money when you sell the business? Exclusive rights to produce the product? Have a patent pending status to be able to pitch your idea to a company for a license or investment? Your attorney needs to be able to listen to your needs and business goals.