How to prepare for the first patent attorney meeting

Efficient use of time is good for everyone. It’s good for both attorneys and clients. While we never want to discourage anyone from asking questions, coming prepared to an initial meeting with a patent attorney will lead to a more helpful discussion. Let’s cover some basic questions that you should try to answer before your initial patent attorney meeting.

You may also discover that thinking through these basic questions ahead of time may trigger more specific questions that will be helpful to cover during the first meeting with a prospective patent attorney.

Does our firm sign an NDA before the initial patent attorney meeting?

No, our firm does not sign confidentiality agreements for these reasons. If you’re uncomfortable with disclosing any specifics, you can always keep your disclosures very general during the initial meeting. We’ve filed so many patent applications that we really do not need to know all the nitty gritty details of your invention in order to answer most of your questions.

Do you want to file a utility or design patent application, or possibly both?

If you don’t know, review the differences between utility and design patents. 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.

Can we tell you if your invention is patentable?

Not exactly. 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.

Do you want a patentability search?

Skip the patentability search for a design patent application unless you wish to expedite it with a Rocket Docket request. If you’re thinking of filing a utility patent application, then a patentability search may make sense for simpler inventions such as mechanical products.

Our patentability searches are performed by a former USPTO patent examiner, so you will get the insights of a patent attorney familiar with the inner workings of the Patent Office.

Our flat rate is $1,500 for a patentability search on a single invention with a turnaround time of approximately 1 week. We do not add any rush charges for a one-week ETA.

What is your budget for a nonprovisional patent application?

Expect a fully compliant utility nonprovisional patent application to start at $9,600 for the initial filing. If that starting cost is too high, please be upfront and let us know your budget for filing a utility patent application.

On a case by case basis, we may be able to provide some discounts. We do provide some flexibility on our rates, so be upfront about your budget for filing a utility patent application. For example, we may be able to craft a nonprovisional application that focuses on certain key aspects of your invention, while saving secondary features for a future filing. This can reduce the cost of a nonprovisional patent application to fit within your budget.

If your budget is nowhere near that rough ballpark, then consider filing a provisional patent application (PPA). Ask about our “as is” provisional patent application filing service where we review, but do not write, your PPA.

Can we provide a flat rate estimate for filing a utility nonprovisional patent application?

Yes, we can provide a flat rate estimate for the initial filing of a nonprovisional patent application after reviewing a summary of your invention. We can send a simple Invention Disclosure Form, or review your existing invention disclosures in order to get a rough idea of the complexity of your invention.

What technical details should you plan to disclose at the initial attorney meeting?

In most cases, we simply need a brief overview of your invention. 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? Can you identify the specific features in your invention that does not exist in prior solutions?

Do you understand that getting 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.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com