Patent attorneys are extremely important. Their impact is felt on every innovative industry the world over, from life-saving vaccines to air travel. As an inventor, hiring a patent attorney is one of the most significant decisions you will make, because you need their help to fulfill your goals and dreams.
Needless to say, some patent attorneys are better than others. It's much more important that you focus on hiring an inventor-friendly patent attorney than one who lives near you.
Here are seven signs you're working with a great patent attorney.
1. They encourage you to investigate whether your invention already exists.
Only new inventions are eligible to be patented. If you don't Google your invention, how can you be sure it's actually new? You can't. This is one reason among many why doing 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 initial idea.
2. They discuss the importance of performing a prior art search.
Simply put, prior art is evidence that your invention already exists. After you search for your invention in marketplace, you need to 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.)
Should your patent attorney be the one to perform the prior art search? No. In my opinion, there is a clear conflict of interest. (If you find out your invention is already patented, you no longer need their services.)
Teach yourself how to do a preliminary prior art search. Then, depending on what you find, consider hiring a third party -- an independent firm or individual -- to help you expand and refine your search.
3. They don't play the fear card.
Inventors are already paranoid someone is going to steal their idea. Putting fear in your mind is a way of getting you to act faster than you might otherwise, which isn't doing you any favors, because no sound business decision is made out of fear.
"Patent attorneys sometimes do too good a job of cautioning inventors about the risks of early disclosures. Done poorly or overzealously, this good caution can definitely come across as instilling fear -- even if that's not the attorney's intent," explains patent attorney Jake Ward of Ward Law Office.
"For this reason, I usually advise my inventors about these risks in terms of 'trust,' and understanding that you need to trust and surround yourself with the right advisers and professionals if you want to see your invention make it out into the world."
A patent attorney who calmly discusses the pros and cons of filing for intellectual property is looking out for you.
4. They provide you with the total cost of getting a patent to issue.
The labor involved with drafting an application is just the beginning of the costs associated with getting a patent. After a patent examiner reviews your application, you will receive what are known as office actions. Essentially, these are reasons not to issue the claims in your patent application as written. To overcome these office actions, your patent attorney will need to negotiate with your patent examiner.
If your patent issues, maintenance fees must be paid 3.5, 7.5, and 11.5 years after the patent grants. (This is true only of utility patents.)
No one likes surprises. You need to be able to budget accordingly.
5. They treat provisional patent applications differently than non-provisional patent applications.
Filing a provisional patent application (PPA) allows you to describe your invention as patent pending for one year while you investigate its marketability. You are not required to include claims -- which define the boundaries of your legal rights and must be written in a very specific way -- in a PPA. Nonetheless, there are patent attorneys who will tell you that drafting a PPA is no different than a non-provisional patent application. Independent inventors cannot afford to patent every invention idea they have, so this is impractical advice at best.
6. They conduct interviews for office actions.
Responding to office actions can become extremely expensive. The best strategy for getting a patent to issue period, let alone 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.
7. They don't run ads.
Like any other service-based business, patent attorneys who are doing a good job depend on referrals -- not ads.
Inventors are easily taken advantage of. You wouldn't expect to be exploited by your patent attorney, would you? Unfortunately, it happens. As 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 of, and regularly hear about truly remarkable patent attorneys as well.
If you believe that you've been taken advantage of by your patent attorney, please reach out to them to settle the issue first. If that doesn't produce the recourse you're looking for, I recommend reaching out to the attorney's state bar association to file a complaint. You can also file a complaint with the USPTO's Office of Enrollment and Discipline.