PATENT: CHOOSE YOUR REGISTERED PATENT ATTORNEY WELL

Other pages on this site have harped about having a registered patent attorney do your application and prosecution of your your invention idea. I hope this is ingrained in your soul. If you are not convinced - read on.

Okay - so you are convinced (like I said, if not, read on) - now what do you do? How do you choose your registered patent attorney?

First, as I have suggested before, you should have some “larn’in” to do. Get yourself familiar with the patent process. Hopefully, some of what I have said on this site will help. But also look at the USPTO site for more information. The problem with that is that it has a lot of ‘bureaucrateze’ going on.

David Pressman’s book “Patent It Yourself” is a great source to help you cut through the maze and learn what the process is all about.

Just don’t get too confident and think you can do it on your own. A registered patent attorney is pretty crucial to keep you out of trouble before and after you get your patent.

Even an egotistical attorney (and believe me, there are a lot of them) would not file his own application (unless maybe if he was a registered attorney himself). The old adage “an attorney who represents himself only has a fool for a client” is well-said and well-meaning here.

Also, a doctor doesn’t operate on herself, nor does a writer edit her own book, if she wants to do well. That goes double for the lay person.

Be familiar with the process enough to be able to ask good questions and assemble your invention idea information into a reasonable form.

WHAT WILL A REGISTERED PATENT ATTORNEY DO FOR ME?

A registered patent attorney is a combination technician, engineer, and artist, or wordsmith. He or she has to use right-brain intuition, pure left-brain analysis, some detective work, and scientific skills and knowledge to ferret out all the ramifications of your invention idea.

He has to take what meager information you may give him and understand your idea and determine what parts of it are novel, unique, and non-obvious from what you have said - and sometimes just from what you have implied.

Then, the registered patent attorney has to put all this into a stylized language and form that will be accepted by the patent examiner. He has to capture the nuance of your ideas and put it into words that capture the true meaning.

The refistered patent attorney has to make sure your “claims” are broad and numerous enough to get you the most protection - yet not be so broad or numerous as to get your application rejected for being frivolous or “obvious.”

A registered patent attorney presents the “prior art” that was found in your search and distinguishes your invention idea within the application. he also anticipates the problem areas and builds arguments to express your invention idea over the existing prior art.

Expect that your initial application will be rejected - maybe even twice - or more. Examiners have to make their brownie points. your registered patent attorney can more easily determine what the examiner is looking for and write to the examiner’s needs in his language.

Imagine filing an application yourself - and getting back the inevitable first rejection and it’s written in Greek. It’s all same-same if you don’t have the training.

WHAT DO I LOOK FOR?

There are registered patent attorneys and patent agents. They both have to have a certain number of hours in science, and they both have to pass the same test - the difference being the agent cannot represent you in court. the agent is restricted to preparing the application and prosecuting it in the USPTO. If anyone contests your patent (and they do) only the attorney can help you in this case.

To find an attorney, here are a few places to start:

•   Check with a fellow inventor if you know one

   

•   If you have your own general attorney, ask for a referral

•   Check with your local Bar Association for a list of Patent Attorneys from your area

   

•   Check your local Yellow Pages under “Patent, Trademark, Copyright attorneys,” or possibly “Intellectual Properties.”

•   There are website listings for IP attorneys that should be found through “Googling.”

   

•   The USPTO website has a listing of Registered attorneys

When you contact an attorney from your list - ask questions:

•   The attorney’s experience and competence - how many years, how many applications, track record of apps filed to apps rejected, etc.

   

• The attorney’s fees and costs (some states require the attorney to put the fee structure into a Fee Agreement, some may not).

WHAT CAN I EXPECT TO PAY IN FEES?

The fee structure depends a lot on what kind of invention idea you have. If it is a straight mechanical invention - like a new can opener - that’s pretty simple. But when you get into the more esoteric fields of biotechnology, advanced electronics, or chemistry and the like, the process becomes much more complicated and technical.

With an explanation of your invention idea to the attorney, he or she should be able to determine at least a rough estimate of the fees and costs involved. Just don’t go in blind with a blank check and start the process. Work it out roughly first.

Some attorneys will bill at an hourly rate. Depending on experience and the marketplace those rates can run from $200-$300 an hour, some markets more.

Some will offer a set rate to take your invention through the search, official drawings, drafting the application, and the filing of the application for a set one time rate (probably based on the time normally spent, and the fees and costs subbed out, like drawings, etc.).

Also, there is a filing fee that could be as much as $790, as well as fees for amendments and an issuance fee if you get that far.

That all said, you can expect to pay from around $2,000 to $10,000 to get a patent using an attorney. Please believe me, it is worth it. Make sure you get a good estimate from the attorney before you start.

One good thing is that all the money is not needed (generally) up front. The process is a tedious one that usually takes from 18 months to two years. Get used to waiting.

WHAT CAN HAPPEN IF YOU DO IT YOURSELF?

I personally experienced probably a half dozen inventors coming to my office with a rejection from the USPTO on a self-drafted patent application. The usual letter from the examiner would explain that the app was not in proper form, the claims were wrong or unintelligible, and the first thing that the inventor should do is FIND A REGISTERED PATENT ATTORNEY!

The problem here is the description and claims already presented are now on file at the USPTO, and any drastic change to the description and claims now could become a new invention and be kicked back because of that.

Fortunately, the patent attorney I worked with most was very experienced and bright, and was able to save most of them. But it would have been much easier, better, and less timely if we could have started on the application from scratch.

Speaking of a half dozen, that is approximately how many patent attorneys I have worked with over the years. The primary attorney I worked with, and mentioned above, is very experienced. He started out for some years as an examiner at the patent office. He then went out on his own as a patent agent - which is when I met him. He put himself through law school, becoming a registered patent attorney for the bulk of our relationship. He also is a master chess player.

If anyone is interested, I would be willing to make a referral. His work I can vouch for. Check my Contact Us page. Choose a Registered Patent Attorney contact