FAQ: What Should I Expect When Meeting with a Patent Attorney?

 FAQ: What Should I Expect When Meeting with a Patent Attorney? by Pat Werschulz

{Read in 4:50 minutes}Many times when meeting with clients for the first time, they are very shy and say, “I’ve never met with a patent attorney before.” They don’t know what to expect or what they need to bring to the first appointment in order to discuss whether they should pursue a patent.

There are some common things that every patent attorney will ask and review with potential clients. Some patent attorneys use what’s called a disclosure form, which asks the same questions that other attorneys go over in the initial meeting.

What is your invention?

What type of invention is it, and what area of art? Many people aren’t familiar with that term, so we’re going to ask if your invention is electronics, or a computer application, or in the area of biotech. Is it a household good, a tool or clothing? By making this determination the patent attorney can evaluate if you’re a good match. We all have our areas of specialty, so it’s always good to work with an attorney who is familiar with the technology you are interested in protecting.

Describe your invention in general.

What does it do and how does it work? If you have photos or sketches, that would be great, even if it’s something on a napkin. That’s a good start. Lots of people feel like they need engineering drawings. You don’t.

Are you the inventor?

Sounds pretty straightforward, but lots of times people will come in and it’s actually their child who came up with the invention or a relative who is too shy to come to the meeting. Who invented it and who else worked on it is important by law. It may be that a husband and wife, parent and child, or siblings work together on a project. It’s good to know who are the parties of interest.

Who is involved in the project directly?

If more than one person comes to the meeting, the attorney is always going to ask who is involved in the project directly. The reason why I bring this up is that a third party in a meeting between an attorney and a client, even a potential client, destroys the attorney-client privilege.

We always have to make sure that everybody in the room is part of the project. If the person is there as support that’s not part of the project, we may ask them to step out when confidential material is being discussed.

Who has seen the invention?

If people have seen the invention, when did they see it? Are they covered by a formal non-disclosure agreement or confidentiality agreement? Is the invention on the market?

If you have an invention and show it to or talk to anybody that is not part of the project or is not covered by a confidentiality agreement, then that’s considered what’s called public disclosure. You have exactly one year to file a patent application in the United States; otherwise, you lose your rights.

Did you do any research on your own to see if there’s anything out there like your invention?

The reason we ask that is because we need to keep track of all the research that we do. We have to tell the Patent Office all we know that’s already out there. The Patent Office starts examination from that base of knowledge and looks for other relevant publications that may indicate whether your idea is new.

These are important things that the patent attorney needs to know before they get started. It’s a good idea to have these things in mind when you make your appointment. Now we are ready to meet!

Patricia Werschulz

Patricia P. Werschulz

Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016
908-313-2347
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