Questions to Ask a Patent Attorney Before Moving Forward with the Patent Process

Experience and Expertise

At Sierra IP Law, our patent attorneys have decades of experience working with clients. In our extensive interactions with clients, we have seen all manner of clients and fielded all kinds of questions about patents and the patent prosecution. The decision about whether to move forward with the patent process can be difficult, particularly if you are not sure about the benefits, costs, and process of obtaining and enforcing a patent. Patents are generally unfamiliar to most businesses and entrepreneurs. To aid potential patent applicants, we have prepared this primer on the patent process to enable you to have a basic understanding of the patent process and to provide you with relevant questions to ask your patent attorney.

Patent Process Overview

Let's begin with an overview of the patent process. The overall patenting process involves several key steps: patentability analysis, preparing and filing the patent application, interacting with the United States Patent and Trademark Office (USPTO) during the examination phase, and, if successful, receiving a notice of allowance. The process begins with an initial consultation with a patent attorney.

Step 1: Initial Consultation and Disclosure

The process begins with a detailed consultation to discuss your invention. In this first meeting, you will clarify the technical details of the invention, discuss potential commercial applications, and whether the invention falls within the categories of patentable subject matter. You may be nervous about disclosing your invention to a patent lawyer. This is a valid instinct. You should not disclose your invention to just anyone. However, it should be understood that licensed patent attorneys are ethically and legally obligated to maintain the secrecy of their clients' information and to act in the best interest of the client.

An attorney cannot disclose a client's invention without client authorization. So you don't need a non-disclosure agreement with your patent attorney. You should look up your attorney on the state bar website to see how long they have been licensed and whether they have any history of discipline or suspension. You should also review their profile to determine what kind of services they offer and ask them questions about their experience in the field.

There are multiple kinds of patents and patent-like protection: design patents, utility patents, plant patents, and plant variety protection act registrations. Also, there may be other forms of intellectual property protection that are available for your invention or related business. Your discussion of the details of your innovation and the technical field of the invention will allow the patent attorney to determine what types of patent protection and other forms of intellectual property protection are available. Your patent attorney will also inform you about their technical experience and/or the experience of other professionals in their law firm in connection with the particular form of technology.

For each kind of patent the inventors must be identified. Inventorship is defined by law and cannot be manipulated. Thus, you must be forthcoming with information about who contributed to the invention to allow the patent attorney to allow the attorney properly determine inventorship.

You should also inform the patent attorney about any disclosures of your invention. People generally understand that they should keep the invention secret. However, the relevant patent law rules about how disclosure can harm your patent rights are not widely understood.

There are also several reasons why you may want to pursue a provisional patent application. The invention may be at the prototype stage and may potentially change. You may want to test the marketability of the invention. You may have a long timeline for developing a marketable version of the invention. These considerations and potentially many others may indicate that a provisional patent application is the better option for you.

The cost of the patent process is always an important consideration. The answer largely depends on the type of technology you have developed and your goals for protecting that technology. The more complicated the technology, the more work is required in drafting and prosecuting the application. Also, if you are seeking international patent protection, the costs can increase significantly. The cost of filing internationally depends on the number of countries in which you wish to seek patent rights.

Questions To Ask Regarding Your Intellectual Property

In your meeting with a patent lawyer, the questions that should be addressed include:

1. What kind of patent protection is available for my invention?
2. Who should be considered an inventor? Do I have co-inventors?
3. Should I keep my invention secret? How do disclosures affect my patent rights?
4. Should I file a provisional or non-provisional patent application?
5. Are there other forms of intellectual property protection available for my innovation and related business plans?
6. What experience do you have with obtaining patents in this technical field? How many patents have you handled in this kind of technology?
7. What are the costs of the patent process?
8. What is your communication style and how will I be informed of the process? Emails, phone calls, client meetings?

Step 2: Patentability Analysis

In almost every situation, a patentability analysis should be performed to gauge the likelihood that the patent application will be successful. A patentability analysis is a standard due diligence practice for determining the chances of success for a patent application. You don't want to commit considerable resources to a patent application that has little to no chance of success. Patentability analysis includes a patent search from US and foreign patent databases, as well as sources of "non-patent literature", such as scientific and engineering literature databases. It should be understood that any public information that was available before you file a patent application is available as "prior art" to challenge the patentability of your invention. So scientific articles, products, Youtube videos, trade journals, and other publicly available material can be prior art if it discloses related technology that is materially related to your invention. Thus, the patentability analysis should take sources of such information into account. The search can also turn up potential infringement problems for your invention. Your invention may infringe prior patents. This is an important consideration before moving forward with a product or service.

Questions to ask Regarding a Patent Search

You should ask your patent lawyer the following questions regarding the search:

1. What patent databases do you consider in your patent search? Do you search foreign patent databases?
2. Do you search for non-patent literature in your search, such as scientific and engineering literature databases, industry publications, related product or service offerings, and Youtube videos for related subject matter?
3. Do you look your search results to determine whether there are potential infringement issues?
4. How are you going to report the search results to me?

Step 3: Drafting and Filing

If the patentability analysis is sufficiently favorable, the next step would be to move forward with an appropriate patent application. In the case of a utility patent application, you would need to choose between a provisional application or a non-provisional application. This decision is very fact specific and requires careful consideration of the present state of the invention (e.g., is it just a prototype, is it production ready, etc.), your specific business plans and timeline for launching the product or service, and many other potential considerations. A provisional application is often used when additional development is expected, as it secures a filing date without starting the formal examination process. A non-provisional application, on the other hand, is a full application that will be examined by the USPTO.

The decision on whether to file for foreign patent protections should be also considered at this stage. Foreign patent filings can be pursued later (within one year of the initial US filing), but the filing strategy, including foreign filings should be considered up front. For example, in some cases it makes sense to file an international Patent Cooperation Treaty (PCT) Application as the initial filing. Also, if you are considering foreign patent filings, the costs multiply with each country in which you choose to pursue patent rights. So, you need to have a careful discussion with your patent attorneys about the countries you are interested in and the associated costs.

The patentability analysis and prior art should be considered in drafting the patent application. The patent claims should be drafted in order to avoid rejections based on the prior art. Thus, the claims should be drafted to focus on the distinctions between the invention and the prior art. This issue should be discussed with your patent lawyer.

Questions to ask Regarding Preparing a Patent Application

Once the patent lawyer has a clear understanding of your filing needs, the patent application can drafted. At this stage, you should ask your patent lawyer the following questions:

1. Should I file a provisional application or non-provisional application?
2. Should I pursue foreign patent rights?
3. In which countries should I pursue patent rights? What are the associated costs?
4. How long will the drafting and filing process take?
5. What is the patent claim strategy for avoiding the prior art found in the search?

Step 4: Examination and Office Actions

After the initial application is filed, the USPTO assigns it to an examiner who reviews it for compliance with patent laws, including novelty, non-obviousness, and utility. There are several potential obstacles that you may face during the patent application process. Commonly an application is rejected based on prior art or formal matters, where the patent examiner cites existing references and argues that your invention is anticipated or obvious to a person skilled in the relevant technology based on the teachings of the prior art. The examiner may issue an “office action” that rejects your application for these various reasons. Most applications experience at least one rejection. It is the patent lawyer's job to contact and inform the client of the office action, analyze the rejections in the office action, and provide strategies for overcoming the rejections, which may include legal and factual attorney argument and amendments to the claims. If you agree to move forward with a response to the office action, the attorney will draft a response according to the response and submit it to the United States Patent and Trademark Office. The cost of these responses are highly variable because the number of issues raised and the number of prior art references cited in the office action is highly variable. As the number issues and references increase, so do the costs.

Timeline and Milestones

The patent process typically takes 2-3 years from filing to approval, but it can vary based on the complexity of the invention and USPTO backlogs. Key milestones include filing the application, receiving the first office action (typically within 12-18 months), and responding to examiner rejections.

In some instances, it makes sense to schedule an interview with the examiner to discuss the case. This is particularly useful where it appears that the examiner has misinterpreted the technology or is misapplying the law. This is a useful tool in advancing patent examination in particular situations.

There are circumstances in which the attorney and the examiner can't find an agreement on the allowability of the claims, even though you and your attorney are confident that the claims are patentable. In such circumstances, an appeal of the examiner's rejections before the Patent Trial and Appeal Board (PTAB). This is an important skill set for patent attorneys.

Questions to ask Regarding the Patent Examination Process

With regard to examination and prosecution, you should ask the following questions:

1. How do you communicate and involve me in the patent examination process?
2. How can I contribute to the patent examination process?
3. Do you conduct examiner interviews during the examination process?
4. Do you handle patent appeals?

Staying Current with Patent Law

Patent law is constantly evolving, particularly in areas such as patent subject matter eligibility, obviousness, and the written description requirement. Patent attorneys must stay current with these changes by attending major legal seminars and participating in IP law organizations such as the American Intellectual Property Law Association (AIPLA), and regularly reviewing key court decisions, such as those from the Federal Circuit and Supreme Court. Staying up-to-date with these developments allows patent attorneys to refine strategies and practices to ensure that your application complies with the latest legal standards and has the best chance of success.

Question to ask Regarding Patent Attorney's Continuing Education

1. What are your strategies for staying up to date on changes in the patent law?
2. Do you stay up to date on decisions by the US Court of Appeals for the Federal Circuit?
3. Do you attend major national meetings, such AIPLA events?

Patent Attorney Selection

Choosing the right patent attorney is crucial to ensuring the success of your patent application. You should select an attorney with technical expertise, legal experience, and client-focused approach. Our firm has obtained patents across various industries, from software and telecommunications to medical devices and biotechnology. Our attorneys have decades of experience handling patent applications in a wide variety of fields. We also have technical professionals on our staff in engineering and science disciplines that provide our attorneys with strong technical support. We take a strategic and thorough approach in handling our client's patent applications. Our approach to patent prosecution is both proactive and collaborative. We guide clients through each step of the process, from initial patent searches and application drafting to responding to office actions. Our technical background and legal expertise results in a high degree of success for our clients.

Cost and Fee Structure

Our fee structure is designed to be transparent and predictable, providing you with a clear understanding of the costs involved in the patent process. When appropriate we provide flat-fee arrangements for patent preparation and filing, which includes drafting the application, filing it with the USPTO, and initial consultations to understand your invention. For other services, we may bill by the our due to the nature of the work, such as patent infringement disputes.

Beyond the initial filing, there may be additional costs for responding to USPTO office actions. Office actions are communications from the patent examiner requesting clarification, amendments, or rejections.

Questions to ask Regarding Patent Fees and Costs

1. What is your fee structure for preparing and filing a utility patent application?
2. What is your fee structure for preparing and filing office action responses?
3. How do you bill for matters other than patent filings and prosecution?

Confidentiality and Attorney-Client Privilege

Attorney-client privilege is a legal principle that protects the confidentiality of communications between you and me as your attorney. This means that any information you share with the attorney related to seeking legal advice cannot be disclosed to third parties without your consent. The privilege encourages open and honest communication, ensuring we can provide the best legal counsel for your patent matters. Everything you disclose, from invention details to business strategies, is protected under this privilege, and it applies throughout our relationship. This includes the initial consultation and discussions before you become an official client.

Confidentiality is fundamental in intellectual property matters, and we take it very seriously. We have protections in place to ensure your information is protected. Sensitive documents are stored in secure, access-controlled systems. Only authorized personnel, who are bound by confidentiality agreements, can access your files.

Questions to ask Regarding Confidentiality

1. What measures do you take to protect the confidentiality of my invention?
2. Do you have confidentiality agreements with your vendors and non-attorney employees?

International Patent Protection

Obtaining international patent protection involves filing patent applications in multiple jurisdictions to secure rights in various countries. Since there is no "global patent," the process typically starts with a Patent Cooperation Treaty (PCT) application, which provides a centralized mechanism to file a single application that can later be pursued in multiple countries. The key steps in this process are: filing the initial PCT application, entering the national phase in countries of interest, and managing the prosecution of each application individually according to local laws.

Our firm handles patent applications in countries throughout the world by working closely with a network of trusted foreign associates who are experts in their respective jurisdictions. After filing the PCT application, we strategically decide where to pursue national phase filings based on your business goals and markets of interest. Our approach to international patent protection is thorough and strategic. We will guide you by assessing your global business objectives, identifying key markets, managing timelines, and ensuring compliance with country-specific regulations to maximize your patent rights worldwide.

Questions to ask Regarding Foreign Patent Protection

1. Do you handle foreign patent portfolios?
2. Do you have established relationships with foreign patent attorneys that can handle foreign patent applications?
3. In what countries are you able to assist me with foreign patent protection?

Patent Infringement and Enforcement

Patent infringement occurs when a party makes, uses, sells, or imports a patented invention without the patent holder’s permission. There are two types of infringement: direct infringement, where a product or process directly uses the patented invention, and indirect infringement, which includes contributory or induced infringement by others. If you believe your patent is being infringed, we can will help you evaluate the situation by conducting a detailed infringement analysis, sending cease and desist letters, handling negotiations and licensing, and if necessary, pursuing litigation.

Throughout the enforcement process, we will guide you by providing clear, practical advice, managing litigation timelines, and leveraging expert witnesses if necessary, always working to protect and enforce your patent rights in a cost-effective manner.

Questions to ask Regarding Patent Dispute Services

1. Do you handle patent disputes?
2. Do you handle patent litigation?

Preparation and Meeting with a Patent Attorney

Before meeting with a patent attorney, it's important to prepare by gathering all relevant information about your invention to set up a productive meeting. You should bring a detailed description, sketches, or prototypes of your invention, as well as any research or documentation that shows the development process. If you have conducted any prior art searches, bring those results as well. Additionally, if your invention has been publicly disclosed, whether through a publication, sale, or use, be prepared to discuss the details, as this can affect patentability.

Being honest and open with your patent attorney is critical. Withholding information, especially about prior disclosures, third-party collaborations, or other relevant matters, can lead to a compromised patent application and potential invalidation of your patent later on. Transparency provides an opportunity to prepare a strategy that mitigates risks, deals with any prior disclosure, and enhances the strength of your patent.

During the initial consultation, we take a comprehensive approach. We inquire about your invention in detail, including its functionality, technical aspects, and potential market use. Our goal is to understand your invention fully and provide guidance on the next steps, including the type of patent that fits your needs and the overall process.

Clear communication is essential throughout the process, and we make ourselves available to provide updates, answer queries, and guide you through each phase of the patent process.

Questions Regarding your Initial Consultation

1. What will be discussed in the initial consultation? Should I bring the description, drawings, and technical information about the invention?
2. Will you provide a cost estimate for the patent application based on the initial consultation?
3. Will the initial consultation be with a patent attorney?

Contact Sierra IP Law, PC for a Free Consultation

At Sierra IP Law, we have a proven track record with a high success rate in patent applications. Our decades of experience and client-focused approach ensure thorough and effective handling of every case. We maintain open and effective communication and have successfully obtained hundreds of patents on behalf of our clients.

© 2024 Sierra IP Law. The information provided herein is not intended to be legal advice, but merely conveys general information that may be beneficial to the legal professional community, and should not be viewed as a substitute for legal consultation in a particular case.