5 Signs your Patent Attorney Is Terrible

Inventors come to patent attorneys with big dreams. However, not all patent attorneys share those dreams.

The inventor is certain that his creation will become an in-demand product. It might even revolutionize its industry.

The patent attorney may have a different view. Perhaps he sees that the market for the invention will be extremely limited or, based on his experience, he may believe that only a very limited scope of patent protection may be available for the invention.

A reputable patent attorney will lay it all out for the inventor. If the lawyer thinks that it will be incredibly difficult to obtain any patent protection or that the protection will be so narrow in scope as to not have value, he will provide his professional opinion to the inventor. The inventor then has the option to decide to proceed with a patent application or not.

Less-reputable patent lawyers may be less forthright with their professional opinions. After all, they need to keep the lights on, so they might tell every inventor they meet that their idea is fantastic and clearly patentable.

Unfortunately, inventors usually don’t have enough experience to tell if their attorney is being honest or not. Broadly speaking, a good patent attorney will describe in detail how demanding and difficult patent prosecution is. Even if a patent is obtained, it can be difficult to commercialize it.

Of course, it also is critical to have a patent attorney working with you throughout the process, but how can you tell if your lawyer is only lining his pockets or has your best interests in mind?

Here are a few signs to be on the lookout for.

1. They Overlook Your Invention’s Marketability

Did you know that the U.S. Patent and Trademark Office is part of the Department of Commerce? This suggests an expectation that patented technology will become a marketable product.

Accordingly, most experienced and reputable patent attorneys will ask an inventor questions about how they plan to manufacture and market their products. The question may be as simple as: “What do you want to get out of this?”

The inventor may answer that they want a patent, but it’s worth remembering that a patent and a business plan are two different things. A good intellectual property lawyer will encourage the inventor to look for manufacturing and marketing opportunities throughout patent prosecution.

By contrast, a practitioner who isn’t interested in the end result probably won’t mention any steps beyond getting a patent.

2. They Skip the Patent Search

Ultimately, it’s the inventor who decides whether or not a search for prior art is conducted before a patent application is filed. However, it’s the responsibility of a good lawyer to encourage the client to have a patent search performed.

Prior art is any patent or other publication that may disclose the same, or a similar, technology as is presented in the inventor’s disclosure. If the technology has already been patented, then there is no incentive for the inventor to proceed with trying to obtain a patent.

If a search is performed, the attorney is required to report any prior art they found to the U.S. Patent and Trademark Office. The patent office examiner who reviews the application may use this prior art against the inventor’s disclosure, arguing that their invention is not new.

However, this is simply a part of the patent prosecution process. With the prior art references uncovered in the search in mind, the attorney can craft a patent application that does not infringe on the prior art. The examiner may argue otherwise, but the lawyer can make clarifying amendments and present arguments against the examiner’s opinions.

3. They Hide the Total Cost

Obtaining a patent is expensive. Not only are there attorney’s fees to pay for drafting the application but also there are official filing fees that are charged by the U.S. Patent and Trademark Office.

However, there’s still more. The patent examiner will almost certainly object to the application, sometimes more than once. The attorney must respond to each objection, and this adds expenses to the cost of obtaining a patent. Next, an issue fee must be paid, and an issued patent is subject to the payment of maintenance fees about every four years.

A non-provisional patent application may cost anywhere between $20,000 to $30,000, and the price may vary depending upon the length and complexity of the invention disclosure.

4. They Don’t Talk About How Broad the Patent’s Coverage May Be

The claims of the patent are the specific embodiment that is protected. Will the inventor be able to get claims that are broad enough to offer any real coverage? Or, will the protection be so narrow as to be worthless? A good attorney will be up front about how broad or narrow the available protection might be.

5. They Avoid Provisional Patent Applications

Provisional patent applications are not examined, and they never issue as patents. These applications are pending for one year. In this time, the inventor can make refinements to their invention and look for manufacturing and marketing opportunities. If things go well and look promising, then it’s time to file a non-provisional patent application that will be examined and may issue as a patent. Trustworthy patent attorneys frequently recommend starting with a provisional patent application as a sensible stepping stone to obtaining a patent.

Contact Williams IP Law

If you have an invention that you believe in, then you need to work with an intellectual property attorney who you can trust. Avoid lawyers who only seem to tell you what you want to hear. Instead, go with an attorney who isn’t afraid to tell you the truth, even if it means that he may not get to draft a patent application for you. That is the practitioner who genuinely has your best interests in mind.

Dozens of inventors have put their trust in Jeff Williams to help them pursue patent protection. Schedule a free consultation to discuss your invention today.

Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner.  He brings a particular set of strengths and unique perspectives to the firm.    
 Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005.  He was an engineer for a number of years at a number of large corporations before pursuing his law degree.  He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010.  By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.