20 Important Questions to Ask a Patent Attorney

The most important thing for a productive meeting is to come prepared. Before meeting with your patent attorney take the necessary time to evaluate your situation and understand what you want to get out of the meeting.

This article examines some typical questions you may have for your patent attorney. Write down any questions you want to ask your patent attorney before the meeting. When you come to the meeting prepared you will feel much more comfortable and confident.

1. Does My Invention Qualify for Patent Protection?

There are many inventions that innovators are creating each day, but not all inventions qualify for patent protection. The four basic requirements for patent protection are:

1. Subject matter eligibility
2. Novelty
3. Non-obviousness
4. Utility

The threshold question you should ask your patent attorney is whether your invention qualifies as eligible subject matter. Before the meeting try to identify if your invention is one or multiple of the following:

• Machine
• Article of Manufacture
• Composition of Matter
• Process
• Design
• Plant

Ask your patent attorney if they think any of the judicial exceptions to subject matter eligibility apply to your invention.

For a patent attorney to give meaningful feedback on novelty and non-obviousness they will first have to conduct a patentability search and review the results. This will likely happen after the first meeting if you choose to hire an attorney.

When reviewing the results of the patentability search ask your patent attorney their opinion of the novelty of your invention. Ask the patent attorney if they think the patent office may find your invention merely an obvious improvement on the prior art.

2. What Type of Patent Fits My Invention?

There are three types of patents available to protect your invention.

• Utility
• Design
• Plant

Your patent attorney is the best person to evaluate your invention and decide what patent protections to seek. If you have a physical product, your attorney may advise pursuing a utility and design patent to protect your invention.

If you do not have a clear understanding of the difference of the types of patents, ask your patent attorney to explain them to you.

3. What Are the Benefits of Patenting My Invention?

You will spend a lot of money to receive a valid patent protecting your invention. Is it worth it? Ask your patent attorney about the benefits of patent protection.

What happens if someone infringes your patent, how do you enforce your rights? How do the benefits of patent protection apply specifically to your unique situation?

4. Should I Pursue Patent Protection in Other Countries?

A patent is granted by a sovereign country. The patent rights only extend to the territory controlled by that country. Ask your patent attorney if pursing patent protection outside of the United States is appropriate.

Identify the business plan for your invention. Do you plan to sell or license your invention in other countries? If so, you may pursue patent protection in other countries. Ask your patent attorney if filing internationally is appropriate for your situation.

Many countries require foreigners to use the services of local national patent attorneys to file applications in their country. Ask your patent attorney if they have a network of foreign agents who can file your patent application in other countries.

5. Are You Registered with the USPTO?

Only a USPTO registered patent practitioner can legally represent you in patent matters before the patent office. A registered patent practitioner has proven their competence in patent law and their moral character to the satisfaction of the USPTO.

There are people on freelance websites who are not registered patent practitioners who offer patent drafting and filing services. Not only are these people disregarding rules and regulations, but they would likely provide a much lower quality of services.

Ask your attorney if they are registered as a patent practitioner with the USPTO. A quick search on the register of practitioners can verify the registration.

6. How Familiar Are You with the Technical Aspects of My Invention?

Is there special technical knowledge needed to understand the invention? Identify the technical field of your invention and any unique background, knowledge, or experience you think anyone needs to understand the invention.

Ask your patent attorney about their technical experience within the field of your invention. What is their undergraduate degree in? Do they have industry experience prior to becoming a patent attorney? How many patents have they worked on in that technical field?

Not all inventions require a patent attorney to have specialized knowledge in that field to write a strong patent application. Some attorneys will consult with technology experts when drafting applications in technical fields outside of their background.

Fields that typically have attorneys with specialized technical experience include biotechnology, electrical engineering, and chemical engineering. Make sure that your patent attorney understands your invention well enough to draft a strong patent application.

7. What Is the Timeline for the Patent Application Process?

Ask your patent attorney about the timeline for the patent process. A typical timeline for a utility patent may look like this.

• Meet with your patent attorney.
• Patentability search and opinion. 2 weeks.
• Provisional patent application: 1 month.
• Nonprovisional patent application: 2 months – 1 year.
• First office action: 1 – 2 years.
• Patent granted: 2 – 3 years.
• Maintenance fee payments: 3.5, 7.5, and 11.5 years after patent issues.
• Expiration of patent: 20 years after application submitted.

The timeline will vary depending on the type of patent, technology field, and workload of the attorney. Ask your patent attorney for their best estimate of the timeline for your unique situation.

8. What Information Do I Need to Provide for the Application?

Your patent attorney will need to gather the following information from you.

• A signed power of attorney.
• Title of the invention.
• Inventor and applicant bibliographic information.
• A detailed description of your invention.
• Any pictures or drawings of the invention.
• Any documents affecting ownership such as a joint research agreement.
• Sequence listings if required.
• Background prior art known to the inventor.
• Other documentation requested by the patent attorney.
• Payment information.

Ask your attorney what other information you need to provide.

9. Will You Conduct a Patent Search?

A patentability search is typically done before applying for a utility patent. This search helps a patent attorney determine what aspects of the invention may be novel and is used to draft strong claims. This search may reveal that your invention already exists and that there is little likelihood of receiving a granted patent.

Ask your patent attorney if they will be conducting a patentability search before drafting an application. Will the patent attorney be doing the search, or will they use a 3^rd party search company. How much will the patentability search cost?

10. What Obstacles Do You Anticipate with My Patent Application?

The most common reason patent applications are rejected is failure to meet the novelty or non-obviousness requirements. Ask your lawyer about the patentability search results and how novel your invention is compared to the prior art. Ask your lawyer if they think your invention is merely an obvious improvement on the prior art.

Ask your patent attorney if they foresee any other issues or obstacles with your patent application.

11. What Happens If You Find Prior Art Similar to My Invention?

Frequently a patentability search will reveal prior art very similar to your invention. Ask your attorney how they will use claim construction to work around the prior art. How will limiting the claims in your patent application to work around the prior art affect your patent coverage and rights?

Ask your patent attorney if they see any ways of changing and improving your invention to make it a novel and non-obvious improvement of the prior art.

12. What Is Your Approach to Responding to Patent Office Actions?

The patent attorney listed on the patent application will be the primary point of contact for the Patent Office. That attorney will receive the office action from the Patent Office objecting to or rejecting your application.

Ask your attorney about their approach to responding to office actions. Will they consult with you after they receive the office action, or do you want them to handle it independently? How will they change the application to get the patent approved? How will changes in the application possibly affect the rights granted by the patent?

If your patent attorney is working on a set fee basis, is responding to an office action included in the initial fee?

13. What Happens If the Patent Office Rejects My Application?

Ask your patent attorney about your rights when a patent is finally rejected. Does your attorney handle appeals with the Patent Trial and Appeal Board? Does your attorney appeal PTAB decisions to the Federal Circuit?

14. What Are My Options If Someone Infringes on My Patent?

You received an issued patent, congratulations! But what happens if someone infringes your patent. How will you even know if someone is currently infringing on your patent?

Ask your patent attorney if they assist with infringement actions or only offer patent prosecution representation. Do they know another attorney who will take on a patent infringement case? Ask your attorney about infringement searching and monitoring. Do they offer infringement analysis and opinions? Will they represent you in a patent infringement lawsuit?

15. What Is Your Fee Structure for Filing a Patent Application?

Make sure you understand your patent attorney’s fee structure up front. Does the attorney charge by the hour or have flat rate fees? Fee arrangement structures include the following.

1. Hourly billing.
2. Predetermined flat rate fee.
3. Contingent fee.
4. Services in exchange for patent rights.

The typical cost per hour of a patent lawyer is between $250 – $650 with a median in the range of $350 – $500. The typical flat rate fee for a patent attorney to prepare and file your patent application is $5,000-$10,000+.

It is uncommon for a patent attorney to work on a contingency fee basis or provide legal services in exchange for patent rights.

16. Are There Additional Costs to Obtaining a Patent?

Ask your patent attorney about other auxiliary costs associated with obtaining a patent. Consider some of the following additional costs.

1. Research and development
2. USPTO fees
3. Drawing fees
4. Maintenance fees
5. Marketing
6. Licensing
7. Infringement monitoring
8. Patent enforcement

It takes time, effort, and money to create an invention. How much more money and time will you need to put into your invention to develop it? Will the invention need further development in the future to keep up with the pace of technological innovation?

The USPTO charges various fees during patent prosecution. The current fees can be viewed on the fee schedule page. Fees decrease if the applicant qualifies as a small or micro entity. An individual inventor can expect to pay at a minimum $364 to submit a utility patent application, and an additional $240 for a granted patent to issue. Patent lawyers typically pass through these fees directly to the client without any surcharge. Ask your patent attorney what USPTO fees you must pay, and how those fees will be paid.

Drawings that accurately depict the invention are important to a patent application. Patent attorneys typically use a person skilled with CAD software to create necessary patent drawings. Ask your attorney who will be making the patent drawings. How much are the patent drawing fees?

After a utility patent has issued, maintenance fees are due every 3.5, 7.5, and 11.5 years. If maintenance fees are not paid, the patent becomes abandoned, and the patent rights are lost. These fees can be viewed on the fee schedule page. Ask your patent attorney about these fees and how to make sure they are paid on time. Will the attorney monitor your patent after issuance and pay the fees for you?

You received a patent, congratulations. Now you need to make some money off it. How are you going to do that? Do you plan to manufacture, market, and sell the product on your own? Will you license your technology to another company and collect royalties? Ask your patent attorney if they offer legal help post patent issuance. Can they help negotiate a manufacturing contract or licensing agreement?

How do you know if someone is infringing on your patent? Ask your attorney about infringement monitoring services. When you find a different, but similar product how d o you know if the other product is infringing on your patent rights? Ask your lawyer if they offer infringement opinions and how much that would cost.

If you find someone who is infringing on your patent, how do you stop them? Ask your patent attorney about how to prevent someone from continuing to infringing your patent. Is it best to write a cease-and-desist letter, offer a licensing agreement, or initiate an infringement lawsuit. How much would these options cost? Is it worth it financially?   

17. Can You Provide an Estimate of the Total Cost of the Patent?

The all-in cost of obtaining a valid utility patent should be somewhere in the range of $5,000 – $15,000. The AIPLA 2021 Economic Survey reports that the median amount patent attorneys charge for an original patent application is $7,500.

The all-in cost of a design patent should be somewhere in the range of $1,000 – $3,000.

The all-in cost of a plant patent should be somewhere in the range of $2,000 – $4,000.

18. How Often Will You Provide Updates on the Status of My Patent Application?

Ask your patent attorney about how often they will correspond with you. When a patent attorney submits a patent application on your behalf, the USPTO correspondence is sent directly to the attorney. An inventor may feel left in the dark about the status of their patent application.

Discuss with your patent attorney how you would like to stay informed about the status of the patent application. Typically, the USPTO will issue an Office Action sometime around 18 months stating reasons that the patent application will not be allowed. The patent attorney will make changes to the application to get it into a condition for approval. Do you want the attorney to consult with you regarding the changes, or just use their best judgment? 

19. Can You Explain How Confidentiality and Attorney-Client Privilege Works for Patents?

Lawyers have a duty of confidentiality to their clients. Attorneys are prohibited from sharing information related to the representation without a client’s informed consent. Confidentiality is very important in patent law. Information regarding your invention could be used by your competitors if it becomes publicly available.

Ask your patent attorney about confidentiality and attorney-client privilege. Ask if they use the services of anyone outside of their firm to help prepare and file the application. Do they have non-disclosure agreements in place with these third parties?

20. What Other Services Can You Offer to Help with My Invention?

Ask your patent attorney about what other services they can provide. Do they offer other legal services such as contract drafting and negotiation, business advising, or patent enforcement?

Ask your attorney about their network for related non-legal services. Do they know anyone who can set up your website, market your invention, or manufacture your product?