Ten Crucial Questions to Answer Before Contacting a Patent Attorney
How To Save Time and Money Filing a Patent ApplicationBy: Lisa M. Warren
August 22, 2014
Don’t be fooled by the ads you see promoting the quick filing of a patent application for a few hundred dollars — filing a valuable patent application is not for the novice and requires a significant amount of communication with a patent attorney.
As a prospective patent client, you can save a great deal of time and money by appropriately preparing for the first meeting with your patent counsel. Answering the following ten questions will help to:
- expedite the drafting process
- ensure that the patent application provides appropriate legal coverage
- reduce costs
- produce a higher quality product, and
- foster a constructive and effective relationship between you and your patent counsel.
1. Describe the invention and its key features in no more than 3 sentences, and provide any relevant drawings.
You need to be able to describe your invention succinctly, both for purposes of your patent filing and to articulate its value for potential investors, business partners, etc.
2. What is the business model related to the invention?
For example, is your business goal to make and sell a product covered by the patent, to sell or license the patent to another company, etc.?
3. What is the closest thing to your invention already on the market or described somewhere? If you’ve done any prior art searching please provide copies of the reports.
Your patent attorney will need to have an understanding of the so-called “state of the art” to understand how your invention differs from and improves on what’s already known.
4. Is the invention in final form or will there be continuing updates and improvements and, if so, what is the time frame for those updates and improvements?
This information will help you and your patent attorney determine whether the invention is ripe for the filing of a patent application or whether it makes more sense to wait for the updates and improvements.
5. Have you already publicized or sold the invention or had any discussions with potential partners, suppliers, distributors, etc.? If so provide copies of any relevant published information and any relevant contracts or agreements.
There are actions which you may have already taken which can compromise your patent rights, and this information will help your attorney determine whether that is the case and how to navigate around any issues.
6. Who has contributed to the invention, and what were their contributions?
The inventors of a patent application must be properly determined, and these facts will help guide this determination.
7. Was the invention made in the course of work done for a third party such as an employer or under a consulting agreement? If so, provide copies of any relevant employment, consulting or IP agreements.
Often employment or consulting agreements contain provisions giving the employer rights in the employee’s inventions.
8. What is your budget for the patent process, both for the immediate filing of the application and for the longer term examination of the patent application?
Depending on the complexity of the invention and the state of the art, drafting of a patent application can range from $2500 to $15,000, not including patent office filing fees. You should have an understanding of whether the costs to prepare an appropriate application make sense in the business context of your invention.
9. Are any aspects of the invention trade secrets?
Patent applications are generally published 18 months from filing, so thought must be given to any issues that would be raised by publication.
10. Do you have any plans to disclose the invention? If so please provide the relevant dates?
In most cases it’s critical to file your patent application before any public disclosure, offer for sale, or actual sale, including discussions with potential partners which are not conducted under confidentiality conditions.
To discuss the patent application in more detail, please feel free to contact Lisa M. Warren.