What You Need And Don't Need In A Patent Attorney

No matter whom you connect with in the business world… and your invention is a business… you have to determine what services they offer, what talent and expertise they bring to their work, and the price you have to pay for it. Gathering this information about an individual or firm is called “due diligence” in the business world, and it should be conducted before making any crucial decisions. (Hey! You might even want to try due diligence in other areas where commitment is involved.)

Due DiligenceDue Diligence

I sense from comments made in our Forum and elsewhere on this site, that many of our readers are somewhat skeptical about getting involved in the patent process, thinking it’s expensive, it’s uncertain, it won’t mean anything unless they have a lot of money to defend it…

In good conscience, I have to say that these concerns are warranted. Going through the process depicted on the diagram below will probably cost between $8,000 and $20,000, maybe more. And the money you spend does not assure you of getting a patent! Furthermore, if you do obtain a patent on your invention, you may still be the victim of knockoffs, especially if your product is successful. That means you may have to defend your patent by taking the idea thieves (okay, alleged idea thieves) to court, and that is where you will need the REAL money.


But, let’s not be too glum. Look at the positive side of pursuing a U.S. patent....

First, the U.S. patent system is probably the most fair and just system that our government has in place. The reputation of the United States Patent and Trademark Office (USPTO) and the reputation of patent attorneys, as practitioners of patent and trademark law, are both extremely positive in an age when many government programs and legal professionals are held in less than high regard.

Second, while pursuing a patent is expensive, its rewards can be very great. If you are determined to pursue the sale of your invention (if you’re not, go back to the first column of the series: How To Come Up With A Great Product Idea ), you have a better chance of success with a patented product, whether it’s licensed to another company or sold directly by your own company. Besides, maybe with a good attorney to help you file your PPA (How Do Inventors Go To Market? The Provisional Patent Application ), you will find someone to license your invention and pay for the NPPA!

Third, you do have somewhat of a safety net if you have a Patentability Search and Opinion done by the right patent attorney. The purpose of the patentability opinion is to provide you with a degree of certainty about the likelihood your invention will receive a patent if it’s applied for, and which claims are liable to be accepted or rejected. Your patent application should not be a gamble: your attorney is schooled and experienced in patent law and should have a pretty good track record that is available for you to see prior to retaining her.

So, if your pulse is still strong and beating fast on your invention, let’s get on with it!

Dec 16, 2006
by bottleslingguy
bottleslingguy's picture

My experience getting a patent.

I used Litman Law Office in Arlington Va., right across the street from the USPTO. I don't know if that helped or not, but I was happy with his level of detail in shaping my patent. I never realized there was so much to say about a stupid strap. But it was rejected twice and I had to provide them (Litman) with the solutions as to why the patent examiner was wrong. There will be a point in the process (unless you're getting a design patent) when you will actually have to read and understand all that gobbledegook (sic?).

It can get pretty scary when, all of a sudden everybody is looking at you for the answers. You'd better know your product and've solved every conceivable problem before you start the whole process.

It's all about doing some serious homework.

Oh, by the way, please check out my invention at Bottle Sling - Invention Gallery .

Dec 19, 2006
by Michelle
Michelle's picture

Hi Phil:Do you have their

Hi Phil:

Do you have their contact info?  Could you send it to me?  I want to perhaps add them to our resource directory so others can use them.



Jan 7, 2007
by Russ.Chadwell

Patent = Hunting License...

All of this information is very good. However, one must remember that, essentially, a Patent is really nothing more than a legal 'hunting license' to go after those who have infringed upon your rights (if you've got the money to go after them that is). Patent attorneys do not take cases on a contingency basis like they might in an automobile accident case. They want $250 to $500 per hour (maybe more) for every hour spent fighting this infringment case (whether in court or in their office). Unless, of course, you think you can somehow do the job of a good, qualified patent attorney instead.

Also, what would you do if someone develops a knock off of your product in the People's Republic of China, and then makes millions selling it in Europe and the rest of the world? Are you going to buy an international Patent as well?? If you do, how are YOU going to find them and fight them?

Remember, the first and best form of protection is (and will always be) selling a superior product for the lowest possible price. Get a Patent if you can, of course, but having a patent hasn't always turned out to be a perfect form of protection. (Especially if you're poor and have already poured everything you have into getting the stuipid patent). People have had patents in force in the past, but were unable to pay for all of the cost of fighting to protect their invention. So, they ended up caving in or cutting deals for shared licenses. In other words, they bought the 'hunting license' but couldn't afford the riffle, bullets, taking time off from work, or the trip to the woods to take on the bear (wolf or whatever), so they ended up staying at home and watching Animal Planet instead.

It can get pretty madening if you foolishly believe that having a patent is complete and total protection. You'd be surprised at the tenacity of certain scoundrels out there. Anyway, my advice is to get a patent, because most upstanding companies will respect this, and there are a lot of respectible companies. Plus, it comes in real handy if you manage to make a few million and then discover that you need to go after certian infringers (in the United States, anyway). Even with this said, it is still possible to discover that YOU are an infringer upon someone else's Patent! - even if you've done searches and hired an attorney to build 'the perfect' patent. Much is missed while patents lay dormant in the Patent Pending process. In the coming years, you may end up doing battle with someone who believes they have an earlier filing date than you!. In these cases, you may end up dealing with the cost of obtaining proper licensing, if you still want to move forward. Crazy ain't it??

But, aren't you really interested in protecting yourself from those companies that are not respectable at that point when you really don't have a lot of money?

In the end, there aren't that many people out there who want to take on producing a better mouse trap and selling it, if there is already a very, very good one on the market at an unbelievable bargan. Having an in-force patent at this point is probably a good way to ensure that they don't give it more thought.

Having said this, keep in mind that part of making something at the lowest possible price often includes being able to mass produce it in large enough quantities to ensure a unit price far lower than any other competitor (WalMart?).

Also, I realize after you invent a gadget you may not be directly responsible for the final price tag. Yet, if the product lends itself toward being easily and cheaply produced in the first place, you naturally stand a better shot of surviving in the woods.

Good hunting!!!

Russ Chadwell

Jan 8, 2007
by Myra Per-Lee

Response to Russ Chadwell

Thanks for sharing your opinions, Russ!

As you implied, there are many ways to get to market and many reasons they choose to go the patent route (see To Market, To Market: How Do Inventors Go? Part 1). I'll be covering the patent opinion, non-provisional patent application, and straight to market paths within the next few weeks, so stay with us.

Myra Per-LeeFeatured Blogger www.AmericanInventorSpot.com