How do you prepare for your first call or meeting with a prospective patent attorney?
You and your potential patent attorney share at least one thing in common: no one has time to waste. Time is invaluable to everyone. You want to make sure to make the most of an initial consultation with a prospective patent attorney. Here is a helpful guide for your first meeting with a patent attorney.
Need to file a patent app? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore working with us.
Does our firm sign an NDA before the initial patent attorney meeting?
At the outset, recognize that our firm does not sign confidentiality agreements for these reasons. If you’re uncomfortable with disclosing any specifics, keep your disclosures general during the initial meeting.
Based on our experience of obtaining over 1,000 granted US patents, we can gauge the scope of your potential patent application without knowing all the nitty gritty. In most cases, a rough understanding of your invention will enable us to answer most of your questions.
Step 1: Decide between a design or utility patent, or possibly both
Review the differences between utility and design patents. Have a rough idea of whehter you should apply for a design patent or utility patent.
It’s OK if you still have more questions, but it would help to have some idea of which path makes more sense for your invention. Be prepared to answer this question at the beginning of the meeting.
Step 2: Consider whether or not to do a patentability search
Do not expect the initial consultation to answer any questions on whether or not your invention is patentable. Answering that question will most likely require a patentability search, but that does not automtically mean that you should always do a search.
Whether or not your invention is patentable will depend on whether your invention is novel and nonobvious in comparison to the prior art. We can, however, provide some preliminary thoughts on whether your invention might be eligible for patent protection.
If your invention is quite basic, we might be able to provide some thoughts on how the utility patent application process would play out, and what additional improvements or features would bolster your chances of getting a utility patent. If you really want to know whether invention is patentable, consider a patentability search.
If you decide to move forward with a patentability search, keep in mind that you must inform the Patent Office of all relevant prior art references found in your search.
At our initial consultation, we might be able to provide some guidance on whether or not a patentability search would make sense for your invention.
Step 3: Budget patent costs
Utility patents are generally much more expensive than design patents. This applies not only to initial filings, but also to the ongoing back-and-forth with the Patent Office. Assuming the applicant is a small entity (e.g., individual or company with less than 500 employees), USPTO fees
For a design patent applciation, the initial filing cost will be under $2,000.
For a nonprovisional utility patent application, the initial filing cost will start at $7,500.
These initial filing costs do not include responses to rejections, known as Office Actions. For a utility patent application, here are rough estimates of additional costs after the initial filing.
Our firm can provide a flat rate estimate for the initial filing of a nonprovisional patent application after reviewing a summary of your invention.
Step 4: Plan on disclosing a minimum level of details
In most cases, we simply need a brief overview of your invention in order to answer basis questions and estimate the initail filing cost.
Here are some helpful questions to think through beforehand:
- What problem were you trying to solve?
- What are the prior or existing solutions?
- What makes your concept or solution different from past solutions/products?
- What are specific features of your invention that do not exist in prior solutions?
Step 5: Understand that a patent does not guarantee that you can make your product
For first-time patent filers, it may come as a shock that getting a patent does not necessarily mean that you can make your patented product. You need to understand the difference between patentability and infringement. It is entirely possible to a get a patent and still infringe someone else’s patent.
Recognize that getting a patent means you get to stop others from using your invention. Owning a patent also gives you the option of licensing it to others.
Need to schedule an initial patent attorney meeting?
Reach out to US patent attorney Vic Lin by email or call (949) 223-9623 to see how we can help you file your patent application.
