Intellectual Property Advice

Question to Ask My Patent Attorney

Hiring a patent attorney? If so, it's best to know the right questions to ask the patent attorney before you start.

A patent attorney can be a great resource in your quest to patent your invention.

But the road to patent approval is paved with pitfalls and obstacles. To succeed, you need to be on top of your game - and it begins with knowing the right questions to ask your patent lawyer.

You've spent far too much time developing your invention to place its future in the hands of someone who may or may not be qualified to obtain a legal patent. Savvy inventors know that in order to ensure the success of their idea, they need to remain intimately involved in every step of the patent process. But since most inventors lack the legal know-how to navigate the patent process themselves, they find themselves at the mercy of patent lawyers. Here are just some the things you need to ask your patent lawyer to keep the process on track.

Pre-Hiring Questions for Patent Attorneys

The most critical questions for your patent attorney occur before he even lifts a finger on your behalf. Since your ability to successfully prosecute a patent application is limited to the background and experience of your patent lawyer, it is absolutely essential to make sure your attorney is qualified for the job. In addition to asking questions about the attorney's legal background, ask about his scientific and technical expertise. Ideally, you are looking for a lawyer that has legal and technical experience with patents in the same area of expertise as your invention.

It's also important to ask about the number of patents the attorney has successfully prosecuted. A background in patent law theory is not the same as actual patent law experience, so it's important that your attorney understands the realities involved with patenting a new invention.

At some point, you will also need to ask about fees. Patent attorney fees are usually based on an hourly rate and it is helpful to receive an estimate of the number of hours it will take to gain approval. Also ask about any hidden fees (e.g. patent search fees) that may not be included in the hourly rate.

Process Questions for Patent Attorneys

You can't simply disengage from the process once you have signed an engagement letter with a patent law attorney. Although the attorney may be the expert in obtaining a patent, you still need to remain closely involved in seeing the patent through to completion.

The questions you ask throughout the process will primarily be geared toward providing you with a clearer understanding of the process itself. What is the sequence of events the attorney will pursue in obtaining the patent? What obstacles does she anticipate along the way? How can you position your application to minimize delays and expedite approval? These are all valid questions that can - and should - be presented to your attorney at some point in the application process.

Post-Approval Questions for Patent Attorneys

After your patent has been approved, your main concern shifts to how to defend your patent against infringement. The details of patent protection vary from case to case, but it might be advantageous to secure additional patents in order to protect your idea from being co-opted by others. If you are new to patenting, you may also need to inquire about how to identify infringement when it occurs as well as the legal approach the attorney might take against infringing parties.

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