What Should You Expect From A Good Patent Attorney?

Your first question should be whether the patent attorney has the technical background to understand your invention. While you cannot expect your attorney to have your depth of understanding in your particular field, the attorney should have a basic technical background in your field so that, after hearing your explanation and asking many dumb questions, the attorney will have a good grasp of the invention. Feel free to ask whether he or she has basic education or experience in the field of your invention. If the attorney does not have a basic background in your field, he or she may be able to refer you to someone who does.

Next, you should discuss with your attorney what you want a patent to accomplish for you in your business. The attorney should have the experience necessary to advise you as to whether your invention might best be protected by a patent, trade secret, or other form of intellectual property and what kind of business benefit you can expect to derive from each form of protection. If the attorney promises you the moon at this or any other stage of the process, run, don't walk, out the door.

Next, you should insist on a patentability search. The patent attorney should be accustomed to dealing with professional searchers who can conduct a patentability search for you. A search is important in order to give you a good idea of what aspects of your invention you can expect to patent. It also gives the attorney good background information in order to prepare the best possible patent application for your invention.

When the search results are in, you should confer with your attorney and discuss what aspects of the invention the attorney expects to be able to claim in a patent application. It is important for you to work together in a team effort with your attorney to prepare the best possible patent application, because nobody knows your invention and your business as well as you do. You should be involved to be sure you understand the claims that are being written and to be sure you are applying for the broadest possible protection. (No, Virginia, patent applications are not all created equal.)

Your attorney should provide you with a copy of the search results and of all correspondence to and from the Patent Office as these materials are sent and received. At all stages, you should feel free to ask for cost estimates, so you can make informed business decisions about each step you are taking. You should review and sign your patent application before it is filed. If part or all of your application is rejected by the Patent Office Examiner, which is very common, your attorney should promptly give you a copy of the rejection, should advise you as to possible responses, and should confer with you about amendments and other responses before they are filed.

You should always feel that you understand and are satisfied with the work the attorney is doing for you, or, if you have any questions, you should feel comfortable to ask and should get a prompt answer in plain language. After all, it is your patent application, and the attorney works for you.