New Inventors Corner: Preparing for Your First Meeting with a Patent Attorney

Many inventors are not sure when it is time to call a patent attorney, and how far along in development of their invention they need to be before such legal services are indicated.  The short answer is that it is never too soon to call to an attorney and ask for help.

If you have an intellectual property question, a quick call will, at a minimum, accomplish several things, even if you are not yet ready to proceed to a meeting:

  • It will let you know if you are, in fact, ready to engage a patent attorney
  • It can help you develop an initial contact with a patent attorney to see if you like talking to that person, which will help in your attorney selection process
  • The chances are you will learn something useful in that call that may prevent you from going down a wrong path prior to your first meeting.

What Should You Ask During An Initial Call?

Making a quick initial call allows you to establish a few things and try to squeeze in answers to your most burning questions, before deciding if you should have a longer discussion with your lawyer.  Ask the attorney if they will schedule an initial consultation call or meeting when you are ready.

Pro Tip: Ask whether they charge a fee for their initial consultation.

If they have the time to spare on the phone, ask about patent searching, the general cost of patent filing for your type of invention.  If there’s time during this initial call, it’s also a good idea to ask the attorney about their experience with your area of technology.  Then, if the time is right, schedule your initial consultation.

How Should You Prepare?

If you do get a first meeting or conference call set up, even though more time will be spent than an initial call, you will have more limited time than you think. The time during your initial consultation goes by quickly, so it is a good idea to prepare and use that time efficiently.  Do some reading in advance.  There is quite a bit of new inventor information on the U.S. Patent and Trademark Office (PTO) website (www.uspto.gov) if you spend a little time there.

You may also want to consider doing some preliminary searching on the Internet to see if there are other products on the market that are like your invention.  If you feel comfortable searching patents or patent publications, there are free resources available for that too, like a Boolean search on Google® Patents, or using a structured search on the PTO website patent searching pages.  While you will likely want an attorney to confirm your searching, in the event you find something identical to your invention already on the market, you may want to re-think your invention a little in terms of its design.

If you plan on proceeding to market without patenting because a prior product showed up in your search, think twice!  You may need a patent attorney even more if this happens, as person who already has a product like your invention may also have a patent on that product, creating issues that may block your path to market.

What Do You Bring to Your Initial Consultation?

Bring any search result information to your meeting to ask for help and guidance.  If no major issues arise from your search, it is still a good idea to bring information on any similar products, patents or publications you found to the attorney, as it will be helpful for them to see what you already know.

It is important to also have drawings of your invention if it’s a device, even if the drawings are only rough sketches.  These drawings will help the attorney understand your invention.  Similarly, if you have a working prototype or rough example of one, bring that also for the attorney to see.

What Should You Discuss During The Meeting?

  • Make sure to mention whether you have spoken to others about your invention or disclosed it, as those facts may impact your ability to file a patent application and the timing of your filing.
  • Show your lawyer any agreements you may have signed (confidentiality agreements, website invention submissions or marketing agreements). It is best that you do not sign such things in the first place before consulting an attorney in some manner, as not all companies out there have your best interests in mind, but if you have them, the attorney will want to see them.
  • Let your attorney know what you have done in working on your invention so far.
  • Explain your goals and ask about the entire patent process and its cost, and not just about what is involved with filing the application.
  • If you have a “pitch” or presentation you have written up and that you plan to use after filing your patent application, bring it to the attorney to review. Your patent attorney can typically also counsel you in the use of trademarks and copyright protection, determine if such a disclosure would impact your patent rights, and give you general guidance.

A patent attorney is a great resource for you when you want to pursue your invention, but like any resource, using the resource intelligently and being well-prepared for your first meeting, will make the process more efficient, effective and productive.

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