When should I call a patent attorney?

Thought Leadership on Intellectual Property Protection presented by Nath, Goldberg & Meyer.

Imagine this scenario. It’s getting very late on a Wednesday night/Thursday morning. You are extremely tired from another long day at the office, plus all your responsibilities at home, yet your mind refuses to turn off and your body refuses to go to sleep. So you sit on the couch, mindlessly watching TV, when you see a commercial promising quick, easy and cheap assistance in filing your patent application. Suddenly, your mind is racing on how this can help your business, and any possibility of falling asleep in the near future has quickly disappeared.

We’ve all been in this situation, or a similar one, more times than we can count. But as usual, you should be leery of anyone or anything that promises to turn a difficult, expensive and time-consuming process into a quick and painless procedure. So, instead of counting on your sleep-deprived brain to make good decisions, turn off the TV, do your best to get to sleep, and when you are fully awake and refreshed, get yourself organized and prepared to meet with your qualified and reputable patent attorney.

Similar to any other professional you hire to do work on your behalf, there are several things you can do to control your relationship with your patent attorney. This will not only ensure you receive a quality product that has real value to you and your business, but also to receive the most value for your time and money invested in the project. Some of the thoughts, questions and pieces of information you should have prepared, or at least considered, prior to contacting your patent attorney to get the most out of the relationship include the following:

  1. Know your desired end result. If you start working with your patent attorney without any end goal in mind, you leave the direction of the conversation, of the overall project and the costs involved, completely in your patent attorney’s hands. While this may be fine if you have a long-standing relationship with an attorney who knows your business well, it is not recommended when starting out with someone new. After all, nobody knows what has the most value and meaning to your business than you do. Of course, you might get lucky and start working with an attorney who asks you all of the business questions up front, but it is usually better to rely on careful planning than on luck.
  2. Be able to quickly and succinctly describe your invention and its key features. The better you are able to describe the critical aspects of your invention, the better able your attorney will be to focus on what’s important and not have to spend critical time (and money) developing these concepts for you. This will allow your attorney to do what they do best — develop a patenting strategy for you that meets the company’s needs and goals. Further, if you can’t clearly and succinctly describe your invention and technology to your patent attorney, how will you be able to do so for potential business partners and/or investors?
  3. Be able to identify the competition. You should not only be able to tell your patent attorney about other companies acting in your same space, but also identify any competing products either under development or already on the market. This will help your patent attorney attempt to carve out a niche for you and your product or, in the extreme case, make a recommendation to you not to proceed before you waste too much time, effort and funds on a lost cause.
  4. Have a plan and timetable not just for your initial invention, but for foreseeable updates and improvements as well. This will help your patent attorney not only determine the best time to prepare and file a patent application for your invention, but also what information about the invention should be included in the first filing. Since a patent is only enforceable for 20 years from your application filing date, you will want to have a well-planned strategy to maximize the patent protection term available, not only for your initial product, but for all future derivative products as well.
  5. Collect the details about all previous publications and/or discussions with others about your invention. The general rule is that disclosure kills. That is, if you have publicly disclosed your invention, discussed the details of your invention with any third parties, or in any other way made it available to the public before your patent application is filed, you are at risk of not being able to obtain a patent for your invention. Knowing this information will help your patent attorney determine whether any such issues exist and, if so, how best to avoid them if at all possible. Be sure to include any future plans to publicly disclose the invention as well!

While there are many additional pieces of information that may be helpful to your patent attorney, these are the critical points on which you should initially focus. Of course, the more information you are able to provide your patent attorney, and the more you or someone else with your company is involved with the process, the better your chances of success. We have helped numerous companies, startups and individuals successfully navigate this process, and stand ready to help guide you as well. Please feel free to contact me to discuss any aspect of the patent application process in more detail.

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