Most of the inventor-friendly patent practitioners I know are willing to spend 60 minutes free of charge with an inventor to get to know them and their goals. Because some inventors may just be looking for free advice, this is an investment on their part -- and also the reason why some patent practitioners charge a small upfront fee.
Alex Aron, a patent attorney at Atlanta-based intellectual property firm Vivid IP, said the purpose of a free consultation is to discuss the client's invention, understand the client's objectives, and answer any question about the patent process.
A patent practitioner who is genuinely interested in you and your long-term business will want to know about the competitive landscape of your invention, identify possible timing issues, be willing to explain the patent process, and describe other tools for protecting your intellectual property.
Make sure to ask the following questions on your first call.
What are your billing practices? Does that estimate include office actions?
No one likes billing surprises. You need an accurate estimate of what it will cost to get a patent for your invention issued. That estimate should include prior art searching, draftsmen costs, preparing and filing the application, USPTO filing fees, communicating through email, and office actions.
Some patent attorneys require a retainer. Others establish a flat fee up front, which obviously makes billing much simpler on the inventor. Ask your patent practitioner to provide you with a fee schedule, so you can better manage your budget.
In my experience working with patent attorneys, having a cost estimate gives you leverage. For example, when the cost of prosecuting of one of my patent applications exceeded the estimate, my patent attorney promptly adjusted it after I brought it up.
As far as I can tell, every patent application is subject to at least one round of office actions. In order for your application to continue, your patent attorney or agent must successfully overcome the patent examiner's grounds for rejecting or objecting to some or all of the claims in your application.
So, if office actions aren't included in the estimate you receive, that's a red flag.
I've been through the patenting process more than 20 times. Without a clear outline, it's challenging to keep track of the many costs that pile up.
Do you recommend doing a prior art search? And if so, who should do it?
Doing a prior art search before filing a patent application is an absolute must for every inventor, in my opinion. Prior art is evidence that your invention already exists, including patents and research papers. There will be prior art.
It's not a matter of whether prior art exists, it's a question of what you can learn from it. Namely, is your initial idea worth investing additional resources in? You may discover the landscape of intellectual property is very crowded and decide not to proceed.
In all likelihood, your patent examiner will reference prior art as a reason not to issue you a patent. So you need to be prepared to work around it. That's impossible if you don't actually know what's in the prior art.
The dozens of patent practitioners I asked all agreed that doing a prior art search is a good idea. What varied were their answers to the question of who should perform the search. A few said they'd perform it themselves, so they understood the prior art directly. Many recommended hiring a third party. Others thought the inventor should be the one, so they better understood what they were going up against.
Getting familiar with the prior art can help you understand and refine your point of difference, which is why I encourage inventors to teach themselves how to do an initial search. Then, if you decide to proceed, hire a third party. With an independent firm, there's no conflict of interest.
I cannot overstate how important prior art searching is. I can almost guarantee you're going to end up wasting a lot of time, energy, and money if yours is not performed correctly.
Finally, I highly encourage you to teach yourself as much as you can about the process, so you don't end up calling your patent attorney with every question you have.