The discussion of how easy or difficult it might be for competitors to get around the claims of your invention should be included in your attorney's patentability opinion, as that might influence your opinion on whether or not to go ahead with a full patent application.
Elements of the Patentability Search & OpinionOf course, you want the patentability opinion to estimate your chances of obtaining a patent on your invention, given the claims you asserted. This learned estimate may be made in terms of a percentage chance or a level on a rating scale, as from poor to excellent. Regardless of how it is phrased, these probabilities are not scientific. They are the patent attorney's best guess, having answered many questions for himself and you, and knowing how he will argue the claims in a patent application, and how confident he is in those arguments, whether you are likely to obtain the patent or not. The patentability opinion's bottom line, the "75 percent," the "fair" or "average," is going to play a significant part in the decision to proceed with a patent application.
We will delve into the specific options that you will have based on the patentability opinion and your personal "circumstances" in the next column of my invention process series .
But before I close this column, I'd like to provide you with some pointers on how to approach the patentability search and opinion
1. Expect to pay between $700 and $1500 or more for a patentability search and opinion, depending on how complex your invention is. Some patentability searches and opinions run as high as $15,000 - $20,000. This is information you should know before entering into a business arrangement with a patent attorney. Review what the patentability search and opinion will entail and make sure your attorney knows what you would like included before proceeding.
2. Share the contents of your inventors notebook, your market research, and your preliminary patent search, including copies of the relevant patents you found, with your patent attorney at your first business meeting (not at the interview)
3. If you feel confident in the thoroughness of your preliminary patent search and your market search, and your attorney agrees that she will not have to repeat those searches, but will add to their depth, try to negotiate the fees for the patentability search and opinion, as you could be saving your attorney certain search fees. You might be able to save a few hundred dollars depending on the extent and quality of your work.
4. Make sure you and your attorney agree on a time line for completion of the patentability search and opinion. If you have filed a provisional patent application, remember you only have one year to file a patent application.
If you have not filed a provisional patent application on an imminent invention, please read my NEXT blog before doing so! Until next week, when I'll cover ways you can utilize this valuable patentability opinion, keep that idea switch turned on.