I have an appointment to talk with a patent attorney tomorrow and am looking for any advice that Dopers can give me. Warning signs of a bad attorney? I have no knowledge about this attorney. He was the first to be prompt answering his phone/emails.:mad: What general questions should I ask? It is a mechanical item and I am looking at getting an utility patent.
TIA
moldmonkey
Moved to IMHO from General Questions. You can get opinions mixed with facts.
samclem, Moderator
Ask whether he has a technical degree in the field of your invention and whether he has successfully helped other inventors acquire any patents in the field of your invention. (The technical term for the application-to-grant process is “prosecution” as opposed to patent litigation, which involves patents that have already been issued by the Patent & Trademark Office.)
Ask if he’ll quote you a flat fee for preparing the application and what his rate is for any additional work, such as responding to any PTO rejections of the initial application (which are common). For that matter, ask if he’s ever drafted a patent that was granted without a rejection–it’s rare in most fields, so it would be impressive if he has, but not particularly troubling if he hasn’t.
I may think of some others, but those are the ones that spring to mind.
Having worked as a Patent Examiner, three categories of advice:
a) Before you go:
Know your invention AND make a strong effort to know what makes yours unique over what’s been done. (You will sign a declaration to this effect and must list material (patents and published materials) you’ve considered. What feature(s) are novel? What features, if combined with two existing devices still don’t quite match your invention? Remember, often the new feature is NOT the whole device, but one special adder no one else considered. And, make sure the new feature(s) are not simply a new way to use a known device as “use” alone is not patentable, like using a screwdriver as a mini crowbar.
b) When you go, you might ask:
Two don’ts:
a) Do not ask the attorney “Do you think this has been done before?” or “Do you think this can be patented?” because a laywer won’t turn away business.
b) In general, people say not to talk money up front and do not make of issue of it. At the end, you might ask how much the whole patent process might run, on average. Understand there are hourly rates and fees for everything little thing the attorney does (phone calls, letters, etc.) Once you sign a “Power of Attorney”, the Patent Examiner can only speak to your attorney. You might do your own research, but you have to communicate to the Patent Examiner via your attorney only.
Does this help?
This doesn’t pertain directly to speaking with the attorney, but I feel like I wanted to chime in agreeing with what Jinx said.
As a current Patent Examiner, I tend to get kind of mired in the goings on in the Office so that I really don’t know too much about actual process that gets an application from the applicant to an examiner’s docket. I do, however, understand that the process of getting a patent can look pretty daunting from the outside, and that having a good attorney or agent to represent you can make all the difference in the world.
I’ll give one piece of general patent-seeking advice: Don’t get discouraged if you get a rejection. Most applications will get rejected at least once during prosecution. (I’ve been with the USPTO for over three years and can still count on one hand the cases on which I’ve granted patents without making any rejection.) Rejections aren’t final (even so-called “Final Rejections” aren’t actually final) and are just part of the process of finding the right way to claim the invention.
Jinx: Very cool, a fellow (ex-, at least) examiner. Would I be right to assume USPTO? (Your location doesn’t give many clues.) If you don’t mind my asking, what art did you examine?
I doubt I need this, but just to be completely safe: Disclaimer: The views expressed in this post are mine and mine alone. The do not and are not intended to represent those of the United States Patent and Trademark Office or its staff.
Wow, two patent examiners chiming in already. You have to love the straight dope.
This is a combination of two existing old items with an added feature that makes it unique. One the patent has long expired (issued in 1967). The other I found in a catalog from 1938 with no mention of patent.
I just read the Independent Inventors Handbook and don’t recall anything mentioned about patents being routinely rejected and appealed. That is very good to know.
The thing that worries me is the “obvious to practitioners of the trade” catch. Practitioners of my trade (machinists) are fairly ingenious and I believe this will be a 'why didn’t I think of that" type of deal once they see it. I try to be a student of my trade and I haven’t seen anything like it.
Anyway, thanks everyone.
Not a problem and yeah, you have got to love the Straight Dope.
It does sound like the question of obviousness is going to be a big deal in your prosecution, but that’s far from unusual. I’m sure it varies a lot from art to art, but I work in a mechanical art (refrigeration and HVAC for the curious) and we make obviousness rejections constantly. (I really don’t remember the last rejection I wrote that didn’t mention obviousness at some point.)
As for the process of rejecting and amending (be careful, as the word “appeal” has a specific meaning in patent prosecution), the process usually flows something like this:
When an examiner picks up an application to examine, if there are rejections to be made, he will send a Nonfinal Rejection to the attorney. The attorney will have 3 months (or 6 if extension of time fees are paid) to put together a response to the rejections (usually consisting of an amendment to the claim language to overcome the rejections and arguments regarding the rejections, but it’s not unheard of to only have one of the two). Once the reply is in, the examiner has a few months (it used to be two, but the docket management system’s been changed in the last couple of months and is much more flexible, though two months is still the average) to examine the amendments and/or arguments and, if he still feels that rejection is proper, send a Final Rejection. If the inventor and attorney still want to pursue the application, they file a Request for Continued Examination (which comes with some fees; I’m sorry to say that I’ve never had to deal directly with the payment of fees so I can’t say how much.) With an RCE, more amendments and/or arguments will be filed. If the examiner still feels like a rejection is proper, a new Nonfinal Rejection will be mailed and the process will repeat. (Please bear in mind that this explanation is simplified and leaves out the possibility of second nonfinals (before a final rejection), after-final amendments and any number of other, less common action.) At any time in this process, an examiner can decide that the application, as amended, is patentable and send out a notice of allowance, ending prosecution, or can contact the attorney to ask permission to make a specific Examiner’s Amendment to place the application in condition for allowance (if the applicant and attorney agree, this results in a notice of allowance and ends prosecution.)
One other thing that occurred to me after I posted is that you shouldn’t expect a quick reply. Sad to say, but the Office is pretty sluggish and has a massive backlog of applications that haven’t been examined yet. The Office’s current director has often said that it’s his goal to get first action pendency (that is, the time from an applicant filing an application to the time he receives the first substantive response from the office) down to 10 months, but it’s currently sitting between 2 and 3 years (this, again, varies based on the art in question).
I hope this post doesn’t come off as being too discouraging. The process can be long and can get complicated in spots, but that’s exactly why having a good representative is so important. Best of luck to you.
Again, Disclaimer just in case: The views expressed in this post are mine and mine alone. The do not and are not intended to represent those of the United States Patent and Trademark Office or its staff.
I just got back from the attorney’s office. It looks like obviousness will probably not be a big obstacle. Some features are from other devices so it had me worried but just about everything builds on top of past ideas.
He explained the process and it looks like a long, expensive process. :eek: Now I have to do some “ciphering” to see if it makes business sense to proceed.
Thanks
Speaking as a Canadian Patent Examiner, who has reviewed lots of USPTO actions over the years, I’ve often wondered why you guys even bother calling them “Final” 
If you, as someone skilled in the art, haven’t seen it, and had a facepalm moment when you realized how to do it, that’s a good indicator that it’s not obvious. Of course, convincing people of that after the fact is always difficult, so don’t get discouraged if you need to argue a bit.
This is a big thing, that a lot of inventors don’t consider - can you really make money off this idea? An honest assessment of that may save you a lot of grief.
Another thing you might want to discuss with the agent/attorney is foreign filing. I know the US has some odd rules on that, but if it’s a salable product, you might want to consider protecting it in other jurisdictions (Like Canada!). There are time limits on doing that, though, so it’s best to consider the possibility early in the process, so you don’t miss out because you missed the deadline.
A Final Rejection is called that because it closes prosecution; it is basically the examiner’s first step in abandoning the application. The applicant’s attorney (or applicant acting pro se) has three months (extendable to nine with appropriate fees) to respond to the Final with an amendment or a request for continued examination (which has its own fee). Sometimes applications get abandoned because the attorney loses track of the application, in which case the attorney can petition for revival (which also involves a fee).
There’s also the option of initiating a request for prioitized examination, at the cost of nearly five grand for a large entity. This was just added at the end of September, as a result of the America Invents Act.
Disclaimer: my posts in this thread do not and are not intended to represent the United States Patent and Trademark Office or its staff.
I have selected an attorney’s office…I think…(large practice/ decent commute/ strictly IP law).
The product I have created is a device for horses. Should the first question I ask be whether/not any attorney in the office is familiar with horses?? Will it affect their ability to do the research if they are flat-out clueless about horses?? Appreciate any feedback.
PS…love this site!!
Hey, I think this is the first Zombie thread in which I posted originally!
As to your question, certainly having an agent who is familiar with the subject matter will be better than not. In my own work, I see the same agents quite often, so clearly they do specialize to some extent.
The trick is to find one. Since you’ve already selected a firm, you’re a bit ahead of the curve, though.
If you’re not committed to this firm though, I’d suggest going to Google Patents:
and finding some similar issued patents. The cover page (look at the pdf) usually lists the agent firm, which might be useful to you.