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

Don’t Pay for What You Don’t Need

I’m pretty conservative when it comes to spending money I don’t have to spend. And in some cases you don’t get what you pay for; there are times when less is more, if you know what I mean…

I’m talking about a big law firm for an independent inventor or small business. The reason to go with a large patent law firm is because you have a constant stream of inventions that you have to apply for in different technical areas, you often have to defend the patents you hold, you hold foreign patents… In other words, a big patent law firm is for a big company. A big patent law firm has a staff of attorneys that specialize in different fields… one in computer design, one in computer software, one in information systems, one in mechanical patents, and so on. Some of its patent attorneys will concentrate only on patent litigation. The big firms will have trademark specialists and trademark litigation specialists. And don’t forget the number of registered patent searchers on their staffs, contract lawyers, paralegals, secretaries, receptionist…Are you getting the picture?Step by Step Patent ProcessStep by Step Patent Process

Just as in other fields of law, patent lawyers are specialized, so don’t pay for what you don’t need right now. You don’t need someone to defend your patent against an idea thief (okay,alleged idea thief); you need someone to “argue” your patent application to the patent office. When and if it comes time to defend your patent in court, your attorney will refer you to a patent litigation specialist. If you have the opportunity to license your product, you should find a good contract lawyer to negotiate your license agreement for you.

One thing at a time. Don’t pay for personnel overhead… and don’t pay for expensive advertising like prime time television spots.

Figure Out What You Do Need

If you are eventually going to apply for an NPPA, whether on your own or with the help of an investor or licensee, you should start out by choosing the person who you want to represent you all the way through the patent process starting with your PPA.

What you need then is a

1) Qualified patent attorney with

2) A specialty in your field of invention and

3) Experience filing patents in your field of invention,

4) A high success rate (80% or better) obtaining patents that he represents in your area; and

5) A high correlation between his patent opinions and patents awarded.

You also need someone who

6) Will take a fresh look at your invention, and still

7) Consider and incorporate, where possible, your own analysis of your invention, as well as your market and preliminary patent research, and where possible,

8) Avoid repeating your efforts unless need be; and

9) Provide you with reasonable approximate charges for each service after your first meeting; and

10) You can work with. (You do not have to like your attorney; professional respect is all that is needed.)

Add other important factors to this list, and then rank them from most important to least. In the next part of this article, we will explore ways to obtain the information we need to do our due diligence.

Until then...

SEE NEXT: Find The Right Patent Attorney For You 

For more advice and information, make sure to check out our section Invention Information Guide for Inventors. 

Myra Per-Lee Myra's Invention Blog InventorSpot.com
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