Hiring a patent professional
It is important for inventors to understand that there is reluctance among some patent attorneys to take on “independent inventors” as clients. Part of the problem is that some independent inventors take up an extraordinary amount of time and rarely convert into clients. Even if they do convert into clients many want to pay a low rate for certain agreed representation and are upset when more is not done by the attorney. I have even heard inventors openly complain that their patent attorney wants to charge them every time they call. It is important to remember, however, that the only thing an attorney has to sell is time; whether that be to perform legal services or give advice. Giving time away for free on a routine basis is a recipe for business disaster for an attorney. The What to do and not to do is often more valuable than the doing. And before that reviewing materials to give educated options and advice takes time. And often at rates lower than other clients.
With all this in mind, how does a serious inventor find the help they need and a reputable, experienced patent attorney? Inventors who want a reputable and experienced patent attorney will do themselves a great favor if they try and understand the business realities facing the patent attorney. There are only so many hours in a day to work, and spending a lot of with those who are not likely to turn into clients, or good clients, is not typically a winning business strategy. Therefore, you want to present from the outset as someone who is serious. Keeping this in mind will pay dividends as you seek out a patent attorney you are comfortable with, who you trust and is able to collaborate with you to form a good and prosperous working relationship.
It is critical to remember that the initial contact is quite important, and asking for a free consultation may set you off in the wrong direction. A reputable and experienced patent attorney likely does not need your work and will not likely engage in an interview process. Perhaps things should not be this way, but many patent attorneys get calls all day long from inventors who want to ask questions and get free advice. This is why we no longer have our phone number on the website and why we greatly prefer initial contact initiate by electronic message.
In the past we have experimented with putting our phone number on the website and even having a toll-free phone number. When we had a toll-free phone number listed on every page in our website we would receive calls all day long from inventors who were merely fishing for free legal advice, asking what they needed to do, which form they should use, and even asking about strategies only to learn at the end of the conversation that they were already represented. “That is what I have been telling my patent attorney,” was an all too frequent ending to many conversations. It also meant I just wasted whatever time was spent on the phone.
When we moved to a local phone number versus a toll-free phone number the number of calls went down, but in our experience those who initiate with a call tend to not turn into clients. In fact, most of the time when we would return a message left on voice mail the inventor would say something like, “OK, who are you again? I’ve called so many attorneys today I don’t know who you are.” Open mouth, insert foot. That is the tell-tale sign of someone who is fishing and not serious. If you want to be taken seriously in business you really should do everything you can to approach the business of inventing as that, a business. If you are just calling around for the first patent attorney who will return your call that doesn’t suggest you are all that serious. There are other ways to educate yourself that don’t require eating the time of a professional who only has time to sell. For example, most any preliminary question a newbie inventor could ever ask is answered on the pages of IPWatchdog.com. I recommend starting on our Inventing Page.
Taking even a modest amount of time to handle inquiries by those fishing for free information and advice on how they can represent themselves without hiring an attorney causes the attorney to eat up valuable time that could be spent working, earning or engaging in activities likely to bring in paying clients. This is the reality of working with independent inventors, and it really needs to be understood. If you know the business reality of the patent attorney you are contacting you are likely to understand the dynamic of the initial contact and present in such a way as to maximize getting good help, or at least pointed in the right direction. So inventors who call or otherwise contact a patent attorney should do whatever possible to initially come across like a serious prospective client, not someone looking to get questions answered so they can do it themselves. This is not to say that you should not ask questions, but if you know you are not going to hire the person you are calling and you only want to ask general questions you should probably be calling the USPTO Inventor Helpline. The folks at the USPTO Inventor Helpline are there just for that reason, and it is one of the better services provided to independent inventors by the USPTO.
If you are going to call or otherwise contact a patent attorney I recommend that you do some homework on the patent attorney before your call. Do an Internet search to see what you can find out about the attorney and the firm the attorney is associated with. Particularly look to see if there is anything that ties the attorney to one of the many well-known and dubious invention promotion companies. Stay away from any attorney that does work for invention promotion companies. Also contact that USPTO and the State Bar Association where the attorney is admitted and ask if there have been any complaints filed against the attorney.
Another good way to find a patent attorney is to join an inventors group and ask the members for recommendations. Most patent attorneys get business through referrals from happy clients, and you might not otherwise be able to find them given all the advertising on the Internet by the more dubious companies in the invention space. With a referral you are also likely to get through to an attorney easier and they are likely to treat you as a real prospective client rather than just as someone calling around for free advice. I know from personal experience when someone has been referred to me by a colleague, client or former client that bumps them to the front of the line. It means there is a certain seriousness and a certain amount of vetting has already been done by someone I know and likely trust. Even if all you have are general questions being referred moves you to the front of the serious line if for no other reason than someone you know, perhaps a very good client, has asked you to take a moment to chat with someone.
When you have found an attorney or two you think you might be interested in working with make contact. I would not anticipate getting directly through to the patent attorney immediately, unless you were referred by someone known by the patent attorney. If you can speak to a live person, whether an assistant or paralegal, find out whether the patent attorney is taking new clients and what the wait time is for getting an application prepared and filed. Also find out if the attorney has worked with inventors in your technical area previously. Also ask how the attorney prefers to work with clients. Many patent attorneys do not meet with clients in person and do everything by phone, fax and e-mail. This is completely fine, and is the way I work with the overwhelming majority of my clients. I have represented many inventors over the years and virtually all of them are not within realistic driving distance. Of course, if you prefer to meet someone in person as the client you are certainly (and legitimately) able to factor that into the equation.
It is also important for inventors to understand that what seems like an easy question is virtually never an easy question. Many times I will get calls or e-mails saying, “I just have one quick, easy question. Is my invention patentable?” That may seem like an easy question, but it is absolutely not an easy question. Like so much in life, in the area of patent law and inventing there are few, if any, easy questions. Answers require an intensive understanding of the surrounding facts. In at least 95% of cases the only way to know whether an invention is patentable is to do a patent search.
Sometimes when I learn about the invention I can see there is really only an idea, and it is easy enough to explain that there isn’t enough there yet to file a patent. Likewise, whenever someone presents with a perpetual motion machine it is easy enough to explain no patent will be obtained unless a working prototype that produces more energy than input can be provided to the USPTO for verification through testing. Nevertheless, in virtually all cases some kind of review of the prior art is necessary at a minimum.
Those who might be interested in working with me are more than welcome to contact me via e-mail. As you will see if you do, whenever contacted by an inventor for assistance I ask them to complete a questionnaire that gives me critical information about their invention. It is extremely useful to have at least some information about the invention at the outset. Without knowing about the invention it is impossible to give any preliminary guidance on what path to pursue, or even an accurate quote (or ballpark estimate) regarding likely costs. It is also my experience that inventors who are unwilling to spend a few minutes telling me about their invention in writing are not very serious about utilizing my services. So returning full circle, those who do take the time to give me at least some information about their invention will hear back from me. I am happy to chat with serious inventors who are seeking my services even if no representation is undertaken, and if I cannot help I do whatever I can to point folks in the right direction.
A representation relationship is just that, a relationship. Who you work with is an important decision and patent attorneys operate differently. At the end of the day what you should be looking for is someone who is competent and who you connect with on some level. In my opinion, when representation is most successful there is a good working relationship between the attorney and inventor, and that requires a certain comfort level and familiarity. Try and work with someone in a symbiotic way. No matter how good the inventor, the invention or the patent attorney, an “oil and water” characteristic to the relationship cannot result in the best work product or the most beneficial ultimate outcome.
(From Dave – It is most valuable to have an IP or any service provider who already specializes in the targeted market niches and attends association and tradeshow events in your category. Who will be your ambassadors and influencers? Reading the trade journals, the related association online site and the website of the past trade shows in your market will be a great source of service providers. You want people with a big “rolodex” and have the phone numbers of some of the people you will want to meet.)
Written by Gene Quinn – Gene is primarily an educator to intellectual property professionals at his company IP Watch Dog
His current site content shows independent inventors the complexity of IP challenge, defense and litigation.
IPwatchdog.com
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David Bruce Savage ♦404 323-8686 ♦ Dave@inventorseducationforum.org
Pointing the way for Inventors and Product Developers with Connections, Resources and Advice
Founder and leader of Inventor’s Education Forum in Jacksonville Florida InventorsEducationForum.org
From my varied work and personal experiences, as well as my leadership of two inventor’s education groups, I provide advice for saving time, money and frustration for inventors, product developers. I’ll point to my extensive network of connections and resources to many of the product and service providers you need.
Whether you are just exploring the viability of your ideas or have products on the market it will be well worth your while to spend some time with me.