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When Do I Need to Talk to a Patent Lawyer?

Brett J. Trout

Sooner rather than later
So you have invented a new product. When is the best time to speak to a patent lawyer? Do you talk to one as soon as you come up with the idea? When you have the prototype made? Once you start manufacturing? The truth is it is never too soon to talk to a patent lawyer. While it is unlikely you will be filing a patent application on simply an idea, it is a good idea to find out the process for obtaining a patent before you disclose your idea to anyone. Once you disclose your idea outside of an attorney/client relationship or non-disclosure agreement you have only 1 year to file your patent application before your invention goes into the public domain. As it typically takes 4-6 weeks to draft a patent application, you want to make sure you do not show up on a patent lawyer’s doorstep the day before your deadline and expect them to draft and file a patent in one day. While it is possible to draft a patent in one day (don’t ask me how I know), it is much better to leave sufficient time for you to go back-and-forth with your patent lawyer over all of the fine details of the patent application, making sure that not only is everything correct, but that the patent application covers everything you need to cover. 

Benefits of early advice
Speaking to a patent lawyer early allows you to budget the time and money required to compete the patent process. It also allows you to make sure any necessary disclosures of the invention, to engineers, suppliers, experts, etc., are done under an non-disclosure agreement in a way that does not start your public domain clock running. A patent lawyer can also help you set up an inventor’s notebook to record the trial and failure process that may come in handy down the road to convince a patent examiner with the United States Patent and Trademark Office that your invention is not simply an unpatentable combination of preexisting parts. Another large benefit of developing an early relationship with a patent lawyer is that they can search for other patents and devices that may be similar to yours. I never like giving a client the bad news that their “invention” has already been patented, but it is much better than giving them that information after they have invested hundreds of thousands of dollars in the idea. 

What can a patent lawyer do for me?   
In addition to outlining timelines and budgets for the patent process a patent lawyer can help you decide what to patent and what not to patent. While patenting all of your inventions is a good idea if money is no object, most companies are looking for a return on any investment, including investments in patenting new technology. It is a good idea to sit down with a patent lawyer early to discuss what inventions you have had in the past, what inventions you currently have, and which inventions you anticipate having in the future. Your patent lawyer should also know something about your particular industry. The more your lawyer knows about your competitors and existing technology, the better they will be at advising you where to focus your intellectual property protection dollar. Knowing a competitor’s best alternative to your invention will assist in drafting a patent that is not easy to circumvent. 

 How do I find a patent lawyer? 
While search engines are good for finding a lot of things online, they are not always the best for finding a patent lawyer. Many times, search engines show you the patent lawyers who spent the most money on online marketing, rather than the best patent lawyer. Another method of finding a patent lawyer is to look at online reviews. Avvo.com and martindale.com both have rating systems to determine your prospective lawyer’s reputation both with clients and colleagues respectively. As for cost, while the best patent lawyers typically charge more than the worst patent lawyers, cost may have more to do with location and overhead than it has to do with the quality of the service they provide. When choosing which patent lawyers to interview, if possible track down other inventors the patent lawyer has helped and ask them for their opinion of the lawyer. Nothing tells you more about the skill of a patent lawyer better than a former client’s honest assessment of that lawyer’s actual performance. When searching for a patent lawyer is also important that you seek out the individual lawyer, rather than a law firm. A law firm may have a great rating, but unless you are actually working with one of the layers who helped earn that reputation, you could be in for trouble. A little-known fact about patents and patent lawyers is that if you hired fifty different patent lawyers to draft a patent covering your invention no two of those patents would be the same. They would all have different scopes of protection, making them either easier or harder to circumvent. A large part of what makes a patent good or bad is how well the inventor and patent lawyer are able to communicate ideas with one another and address inaccuracies.

Communication is key
Even if you were to run across the best patent lawyer in the world, that patent lawyer may still not be the right patent lawyer for you. The best patent lawyer for you will be a lawyer with whom you have good chemistry. Once you have your list of potential patent lawyers narrowed down, talk to them. Get a feel for how well they communicate with you and how well they understand your needs. Selecting a patent lawyer with whom you communicate well is one of the best things you can do to increase the odds your patent will give you the maximum amount of protection at the lowest cost.  

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