One of the problems independent inventors face when seeking representation from a patent attorney or patent agent is an unfavorable stereotype of inventors that has developed over many years. Like virtually all stereotypes there is at least some truth, but as in most situations the “truth” winds up being contributed to common understanding and accepted within the industry due to a minority of inventors. Unfortunately, the minority winds up painting an unfavorable picture for the majority. Allow me to explain.
There is no easy way to say this, so I’ll just say it — if you want competent representation from a patent attorney or patent agent you cannot come off like a crazy inventor, out of touch with reality and/or combative. Sure, even a crazy, out of touch, combative inventor who goes around wearing tinfoil hats may eventually be able to find a desperate patent practitioner to represent them, but you’d really rather be working with the patent practitioner of your choice, not someone who is desperate.
The point here is you need to be mindful that patent practitioners are frequently on guard when dealing with independent inventors. As with virtually everything in all walks of life, the more you know in advance the better prepared you can be.
Patent attorneys and patent agents are required by federal regulations to maintain information they obtain from clients confidential. See 37 C.F.R. 11.106. Confidentiality requirements embodied in federal regulations specifically applicable to patent attorneys and patent agents apply not only to those who are clients (i.e., have signed up as a client with a representation agreement), also apply to prospective clients as well. See 37 C.F.R. 11.118(b). A prospective client is anyone who comes to a patent attorney or patent agent seeking help, assistance, advice or direction on a legal matter. You do not need a confidentiality agreement when speaking to a patent attorney or a patent agent as a client or a prospective client, and in fact, most patent attorneys and patent agents do not sign confidentiality agreements. The federal regulations already in place are stronger than any confidentiality agreement anyway.
Insisting that a patent attorney or patent agent sign a confidentiality agreement because you do not trust the mandatory requirements placed on patent practitioners by federal regulations (something many inventors have told me over the years) is a quick way to be viewed as a non-serious individual who will be difficult to work with. It is a big red flag.
Having said this, some patent attorneys and patent agents will prefer an initial consultation be non-confidential. The typical reason for this is because patent attorneys and patent agents represent existing clients and without knowing what your invention deals with there is no way to know whether there is a conflict of interest that would prevent the attorney/agent from representing you. For that reason it is perfectly reasonable to ask whether an initial conversation will be treated as confidential under the previously mentioned federal regulations, or whether the initial conversation is non-confidential. If the patent attorney or agent tells you they prefer to speak in a non-confidential capacity until it is determined whether they can proceed with representation then you should not disclose anything confidential. Such a disclosure today would create many potential problems under first to file laws.
2. How to Prepare
Obviously, you are going to want to come to any meeting with a patent agent or a patent attorney prepared with information relating to your invention, but more importantly you want to be prepared.
One of the most difficult things for patent practitioners is when they are representing someone that cannot or will not help them. This can actually take several forms, from inability to assist (i.e., language barrier) to unavailability (i.e., never being available) to the inventor who is trying to be overly helpful and dumps huge amounts of disjointed and rambling information onto the patent practitioner expecting them to sort through it all and make sense of everything.
The patent attorney or patent agent you hire is there to represent you. They are not the inventor, and they need your assistance. If you really have an invention you know the invention better than anyone. Cooperation is critical. Communication is critical. The opportunity to establish a working relationship starts with the first meeting or contact, hence the need to be prepared.
Everyone reading this will likely have different inventions, so it is hard to give general advice on what type of information should be prepared, but the patent attorney or agent is going to need to know the basic configuration of the invention, as well as any optional enhancements that can be added. Pictures can be particularly helpful if your invention is amenable to photography. A picture really can be worth a thousand words. If there are key pieces or aspects of your invention consider taking pictures of those. If you have any artistic talent or drawing skills, line drawings can be quite effective to convey information.
If you are having difficulty coming up with a package of information to provide your attorney consider the Invent + Patent System™. One of the perfect uses for the system is to help inventors collect their thoughts relating to an invention so they are cohesive and manageable.
Having a package of information that describes your invention in writing, together with photographs and/or line drawings will go a long way to establishing a seriousness about your pursuit. It will also cut down at least some of the time any patent attorney or patent agent will have to spend sorting through disjointed information, which allows them to spend the time you are paying them on adding value.
3. Pay for Patent Attorney Services
You really need to expect to pay for services rendered. You are going to a professional to seek professional assistance. Patent attorneys and patent agents do not sell products, they sell services, which means all they have to sell is time. Time is money, quite literally.
Many inventors spend copious amounts of time looking for representation on a contingency basis, but the reality of patent practice is that patent practitioners do not represent inventors on a contingency basis. There are many things that can and will present challenges between the completion of the invention, obtaining a patent and ultimately making money on the invention. When attorneys take cases on a contingency they do so because there is a virtual guarantee that there will be at least some money recovered or obtained, which is why contingency representation is so popular with personal injury attorneys.
In the innovation world very few inventions actually make more money than invested in the invention. That doesn’t mean you shouldn’t try to succeed with your invention, and it doesn’t mean that your invention isn’t going to be in the 1% to 2% of all inventions that make money, but those odds are not good for patent attorneys who would need to work many hours for free based on the hope that at some point in the future a payday may arrive.
A slight variation of the request for contingency representation goes like this: “I want to let you in on my invention and we can be partners.” Randomly going to a patent practitioner asking for contingency representation, or for a partnership, is going to get you nowhere fast. You really need to be prepared to pay for the services you will want or need.
4. Shopping Around
There is nothing wrong with shopping around to find the right patent attorney or patent agent. Having said that, you need to be careful how you do it or you run the risk of alienating competent, experienced patent attorneys.
Everyone has a budget, even the largest companies in Silicon Valley are willing to spend only so much to obtain patents. So it is hardly a shock to learn that independent inventors need to keep costs reasonable and within a budget. Patent attorneys and patent agents should be able to tell you roughly how much it will cost through filing a patent application with relatively close precision after learning a little about your invention. For some ballpark information you can see The Cost of Obtaining a Patent.
After you’ve practiced long enough you know about how long it will take to provide the kind of information required in an appropriately detailed patent application. So it is reasonable to ask early on in the process about costs — in my opinion — because if the cost is too much for a particular budget all that is happening is everyone is wasting their time.
What has put me off in the past, however, is when I will get an e-mail, letter, or message via LinkedIn from a prospective client who asks me to bid on a project. Competent, qualified patent attorneys are going to determine how much work legitimately needs to be done and they will give you a fair and reasonable quote. If there are legitimate ways to pursue a more austere path those can be discussed, but you must realize you are never going to pay for a Kia and receive a Lamborghini. The only way to keep costs low in the patent world is to do less work, which can be a recipe for disaster. A race to the bottom for the lowest cost provider guarantees inferior quality, which is something that inventors MUST be mindful of when they simply choose the lowest cost provider.
The other thing about shopping around that should be understood relates to the request for a bulk discount. It would seem that many inventors have been told, or have independently surmised, that if they tell a patent attorney or patent agent that they have 10 or 20 patent applications ready to go in the near future that will get them a discount on the first patent application. Like all industries, bulk work does receive bulk discount pricing, but bulk pricing actually requires bulk work. You simply cannot give a bulk discount for a single piece of work, and inventors who ask for a bulk discount on a single piece of work come across as insincere and send the wrong message every time. They simply do not get taken seriously.
5. Be Informed and Realistic
Let’s return to the theme of preparation. Previously I talked of preparation with respect to being organized with respect to the information you have relating to your invention. Now it is important to understand the importance of being informed with respect to patent law and process. Obviously, you are hiring a patent attorney or patent agent to represent you so you don’t have to do it yourself, but that shouldn’t absolve you of the need to understand what is going on. The more you understand the better you will be able to participate with important decisions, and the better understanding you will have about the information that is required, which in turn will make it easier for you to provide the best, most relevant information that will ultimately lead to the best product (i.e., patent application and ultimately a patent). We have hundreds of free tutorial articles here on IPWatchdog. I recommend you start with Inventing to Patent 101: Everything You Need to Know.
You also need to be realistic. Being realistic can come in many forms, from realistically estimating the market size — a critical mistake many inventors make that will immediately turn off knowledgeable industry professionals — to realistically appreciating the differences between the prior art and what the invention contributes.
Serious professionals simply steer clear of inventors who have unrealistic expectations because those with unrealistic expectations have expectations that can never be met.
The point here is you need to be mindful that patent practitioners are frequently on guard when dealing with independent inventors and any sign that you will be difficult to work with, for whatever reason, will cause serious professionals to question whether they should get involved even if you are willing to pay their requested rated.
Join the Discussion
9 comments so far.
KeithJanuary 11, 2018 11:56 am
Excellent blog, and I wish that prospective clients would first read this.
BennyOctober 9, 2017 12:28 pm
Nifty brand name, hope you trademarked it, the brand could be worth more than a patent.
Jan Shields LVT, BSN, RNC-NICOctober 8, 2017 03:50 pm
Aloha Benny, no, it was different. There are hundreds of them on the shelves, today, you have to have seen them right? Drinking cups? My design was different, but I am sure that someone has that one too now. Back then, there wasn’t anything on the market that I ever saw, and mine was/is still different but probably not better. http://808hidr8.com Mine was different still than these, hot or cold, but so you get the idea. I wanted to do them to sell frozen homemade lemonade on Maui, customer keeps the cup. If you have ever been here, you know it would make a fortune. I stayed in the medical invention field instead.
One more thought, one issue I wish would have known about: Make sure your patent attorney is a litigator. That way, when you have a hugely successful product, and you mistakenly license to an unscrupulous businessman, the lawyer knows the invention and can help you sue.
BennyOctober 8, 2017 01:41 pm
well don’t leave us hanging…did anyone buy it ? (you did’nt simply re-invent the thermos or insulatef mug, did you ?)
Jan Shields LVT, BSN, RNC-NICOctober 6, 2017 09:03 pm
I would say, remember what you are paying the Patent Attorney for. He is the legal expert, you are the creative person. Back in the mid-1990’s, I came up with an enclosed beverage container that would keep the contents (water, lemonade, soda, beer etc.) cold for hours. My patent attorney told me that people will never purchase anything like that, don’t waste your time and money. How many different beverage containers are on the market now? Darn! That was the last time I ever let someone tell me that an invention isn’t good. Your lawyer is there for the legal part. You bring the invention.
`Dave Savage – Inventor AdvisorOctober 1, 2017 09:40 am
I would add 2 additional points.
• If at all possible, find professionals (in most categories) who are active in the market segment you want to be a part of. You need as many project ambasadors as possible. Do they have a strong list of personal relationships in your market? Do they actively read the trade publications and websites in your segment? Do they regularly attend the trade meetings and conferences to make important connections for you? Are they well experienced in the details needed to impress the USPTO staff to get the IP information for your market segment properly organized and documented?
• Is a part of the content on a parent professional’s website about the situations where a patent is a waist of the inventors resources, better applied to marketing?
Let alone the cost of getting the IP, most independent inventors are ignorant of the cost in money, time and effort of defending their patent and the many ways competitors can create alternate solutions, without infringing. Be careful about what you ask for as a insufficiently informed consumer.
Dennis DohogneOctober 1, 2017 09:40 am
In a previous patent I prepared several documents describing my invention and how it differed from prior art; how they did it vs. how I was doing it. This included images and paragraphs from those arts. My attorney had no experience with this particular area so I was trying to dramatically shorten his learning curve. He said it was very helpful, but a friend of mine with over 70 patents with a major company said not to do this, that this could be used against me in any litigation.
What are your thoughts on this, or have you discussed this in another article?
David JonesOctober 1, 2017 09:09 am
What happens if you have a patent attorney that does an outstanding professional job but is constantly encountered by a stubborn examiner who is always missing the main claim in a patent pending application?
BennyOctober 1, 2017 05:41 am
allow me to add a tip based on real-life experience with certain un-named CEOs:
You are paying a patent attorney to listen to their professional advice, but you are billed for the attorney’s time, and that includes the time the attorney spends listening to you. Stick to the point. Don’t use that 6-10$/minute time to talk about your weekend or tell tales of your previous successes, failures, dreams, business ventures etc. If the attorney is curious (probably not), they can listen to you on their own time.