Here are our top five tips on working with a patent attorney.
- Choose a patent attorney who understands your industry and has experience working with professionals like you. One of our clients hired an experienced attorney, spent tens of thousands of dollars in legal fees and after several years still did not have an issued patent from the US Patent and Trade Mark Office (PTO), just rounds of claim rejections. After reviewing the situation and offering our opinion, we found that despite their breadth of experience, the patent attorneys did not take the time to learn enough about the client’s business, or the details of the invention that related to its market originality. As a result, the application didn’t emphasize the real value of the invention – confusing the patent examiner to the point where it was easier to keep rejecting claims.
- Be prepared to work hand-in-hand with your attorney. Our client assumed their patent attorney would understand the invention, and get a patent that would have the value they expected. This is what most people do, but unfortunately it is a rookie error. The inventor, or business hiring the attorney (or ideally both), need to be directly involved in writing, reviewing, rewriting, and understanding the claims to be filed. It is too costly and too risky to leave it up to others who did not invent it. Only with direct involvement can you understand how likely it is that your patent will be granted, and that the issued patent will provide real value for the expense. Take the time to educate your attorney about your innovation and about the position you hold within your industry.
- Establish specific goals for the patent or patented product and communicate these at the outset. As stated earlier, lack of understanding creates major communication gaps and unfavorable and unexpected results. An attorney is focused on delivering you an issued patent. You want to be the only company legally allowed to manufacture and sell the product you are seeking to patent. But, the devil is in the details – if the attorney focuses on only the details of the construction or drawings, he might miss its broader business value. The result is a patent that is too narrow, easy for a competitor to get around and basically unenforceable. It is your job as inventor or business owner to set out the expectations of what constitutes a valuable patent. This does not mean it is achievable, but it sets benchmarks and criteria to measure success or failure.
- Don’t be afraid to change horses midstream. In reviewing the situation for one of our clients, we advised them to change to a patent attorney who understands their category of product better and is able to get to the essence of the invention quickly. A change of attorney can be politically helpful with the PTO, and in this case, the examiner was more receptive to changes as a result. The advantage of dealing with a government operation like the PTO is that final rejections are rarely final. Nine months after we first reviewed the situation, a patent was issued and was much broader and more effective.
- Finally, go to the mat or don’t bother to patent. We know first hand (from our days at ttools) what it is like to design a product that is first of its kind, only to have companies with better retail connections churn out copies. It is frustrating to only have an unenforceable patent pending, while losing significant market share to the unoriginal and wondering how you are going to stay in business. But once that patent issues, you need to enact a strategy to evaluate infringement, issue cease and desist letters, and file suit. This process can take a long time (and even more money) to resolve, but strategic patenting can be a market deterrent, a competitive offense and in rare cases, a revenue generator. If you are not prepared to take on your competitors then the issued patent has no real value to you or anyone who might buy your patent or company.