Questions to Ask a Patent Attorney
Good questions to ask a patent attorney, for inventors and small company founders meeting one for the first time. The 53 questions follow the order the work does: checking the attorney, whether the invention is worth filing on, filing strategy, what each stage costs, the years of examination, and what the patent is good for once granted. The second group holds the questions to ask if something can be patented in the first place, and the last two groups are the ones to ask your patent attorney after you have hired one.
The questions
Each question, and why to ask it
The attorney
Are you a registered patent attorney or agent, and what is your technical background?
Why ask it
Most patent offices keep a register of the people allowed to represent applicants, and a general business lawyer is usually not on it. Where the register is public, look them up before the meeting. Then set their degree beside your technology: a chemist can learn a gearbox, but you will be paying for the lesson.
Have you drafted patents in my field, and can you point me to two or three that issued?
Why ask it
Issued patents are public, so this is checkable in a few minutes. Read the first claim of one. If it runs half a page and lists every part, a competitor may only need to leave one part out to avoid it.
Is what I tell you today confidential, and do I need you to sign a nondisclosure agreement first?
Why ask it
A lawyer's professional duty of confidentiality generally covers what a prospective client says in a consultation, which is why many patent attorneys decline to sign a separate agreement. Ask how that duty works where they practise, and whether it applies in the same way to a patent agent.
Who will actually write my application, you or an associate, and what does each person bill?
Why ask it
The person who sells the engagement is often not the person who drafts it. Ask to meet the drafter, because a patent is worth what its claims say and that is the person choosing the words.
Roughly how many applications have you taken from filing through to grant, and how many were for clients my size?
Why ask it
The raw count matters less than the mix. A practice built on large corporate portfolios can be excellent and still treat a one-application client as low priority, so find out who their typical client is. A high grant rate proves little by itself; what was granted is the thing to ask about.
Do you already act for anyone in my market, and when do you run your conflict check?
Why ask it
A firm that knows your field has probably worked for someone else in it, and that alone is no reason to walk away. Drafting claims for you and for your nearest rival on overlapping technology is the situation to rule out. The check should happen before you describe the invention in detail, not after.
If you leave the firm, or I move my work elsewhere, what happens to my file and my deadlines?
Why ask it
An application can outlast a job, so this comes up more often than people expect. The file is normally yours to take; what has to transfer cleanly is the calendar of deadlines. With a solo practitioner, ask who covers when they are ill or away.
Can it be patented
Before you can tell me whether this is patentable, what would you need from me?
Why ask it
A good answer is a list: a written description, drawings, dates of anything you have shown or sold, and the closest products you know of. Anyone who calls your idea patentable in the first meeting without looking at prior art is selling rather than advising.
What tests does an invention have to pass before it can be patented?
Why ask it
The wording changes from country to country, but the tests are close to the same everywhere: the invention has to be new, more than an obvious step for someone who works in the field, of practical use, and a kind of thing the law there allows patents on. Have them say which of those is the weak point for yours, since that is where the search and the drafting effort should go.
Which part of what I have shown you is the invention, in your own words?
Why ask it
Hearing it restated is the quickest test of whether they understood the technology. Expect their version to be narrower than your pitch, and sometimes to sit somewhere you did not expect, such as one step in how the thing is made. If it misses what makes the product work, correct it now, before it turns into a claim.
This is an improvement on a product that already exists. Can an improvement be patented?
Why ask it
Improvements are ordinary subject matter for a patent, provided the change itself is new and not an obvious one. The claims would then reach only what you added. Check with them whether the original product is still covered by someone else's patent, because yours would give you no right to make theirs.
Is this too simple to be patented?
Why ask it
Simplicity is not one of the tests. The examiner asks whether the step from what already existed would have been obvious to someone in the field, and a plain device can clear that bar if nobody had taken the step. Bring the nearest older product you know of, since the answer depends on how far yours is from it.
Have I already done something that could damage a filing: sold it, demoed it, given a talk, put it on a crowdfunding page?
Why ask it
Many countries refuse a patent on anything made public before the filing date, while a few, the United States among them, allow a limited grace period. A sale or an offer can count even when nobody saw how the thing works. Bring every instance with its date, because a right lost this way usually cannot be repaired afterwards.
Do I need a working prototype before I file, or is a detailed description enough?
Why ask it
Patent offices generally want a description complete enough that someone skilled in the field could build the thing, not a model of it. The test is whether you know how it works in enough detail to write that down. If key parts are still guesses, expect to be told to finish the engineering first.
Is a patent the right tool here, or would I be better off keeping this as a trade secret?
Why ask it
Filing means publishing how the invention works, in exchange for a right that eventually runs out. For a process nobody can work out from the finished product, secrecy may protect you for longer. See whether they can recall telling a client not to file, since that advice earns them nothing.
My invention is mostly software or a way of doing business: can that be patented at all where I plan to file?
Why ask it
Eligibility for software and business methods differs sharply from one patent office to the next and has moved with court decisions, so a quick yes or a quick no both deserve a follow-up. Ask how they would describe the invention as a technical improvement, and how examiners in that area have been ruling lately.
What will a prior art search cost, and what will you do if it turns up something close?
Why ask it
A search usually costs a fraction of the drafting fee, and its job is to let you fail early and cheaply. No search finds everything, so the answer you get is a risk level and not a clearance. Insist on seeing the actual references with their honest read of each, not a one-line conclusion.
I have looked and cannot find anything like this for sale. Does that mean it is new?
Why ask it
Not on that evidence alone. An examiner compares your idea with everything published before your filing date: expired patents, applications that were abandoned, journal papers and manuals, in any language. Much of what sits in the patent databases was never made or sold, so an empty shop shelf is a good sign and nothing more.
What do you expect to be the hardest objection to overcome on this one?
Why ask it
An exact copy in the prior art is the rarer problem. More often an examiner combines two older references and calls your idea an obvious step from them. An attorney who has read your description should be able to guess which two, and one who foresees no difficulty has not looked hard.
What are the odds this gets granted, and granted with claims worth having?
Why ask it
Before a search nobody can answer this honestly, and after one it is still a judgment, not a percentage. Press on the second half of the question. An application can often be pushed through by narrowing its claims until they cover very little, and the narrowest claim still worth paying for is the thing to pin down.
If your view is that it cannot be patented as it stands, what would have to change?
Why ask it
A no is often a no to the broad idea and not to everything inside it. The way forward may be a narrower feature the earlier references lack, test results showing an effect nobody expected, or more development before you come back. If nothing would change the answer, hearing that now costs a consultation instead of a filing fee.
Even with a patent of my own, could I be infringing someone else's by selling this?
Why ask it
A patent lets you stop other people; it gives you no permission to sell. Checking for that is a separate job, usually called a freedom-to-operate or clearance search, and it tends to cost more than a patentability search because live claims have to be read closely. For some products it is worth doing before you pay for tooling, and the attorney should say whether yours is one.
Strategy
Can you walk me through each step between today and a granted patent, and mark where I have to decide or pay?
Why ask it
The sequence is roughly search, drafting, filing, publication, examination, rejections and responses, allowance, then a final fee. Listen less for the list than for whether they can say it in plain words, because every letter over the next few years will arrive in the same voice.
Would you start with a provisional application in my case, and what does that actually buy me?
Why ask it
Where provisionals exist, as they do in the United States, one holds your filing date for twelve months, but only for what it actually describes. A thin two-page filing therefore protects very little. Find out whether they draft provisionals to the same standard as full applications or treat them as placeholders.
If someone else files on the same idea before I do, does it matter that I thought of it first?
Why ask it
Nearly every patent system now gives priority to the earlier filing date, not the earlier idea, with narrow exceptions that differ by country. That is the practical argument against waiting until the product is perfect. Dated notebooks still help show who the inventors are, but they will not win a race to the patent office.
Could this one product support more than one filing, say a utility patent on how it works and a design filing on how it looks?
Why ask it
The two protect different things and can sit side by side. A design filing, called a registered design in many countries, tends to be quicker and cheaper, but a competitor who changes the appearance walks straight around it. The useful test is which of the two a copycat in your market would actually run into.
How broad will you try to make the claims, and what is the fallback if the broad ones are refused?
Why ask it
Broad claims get rejected, narrow claims are easy to design around, and where they aim tells you how they think. Listen for a plan that spreads the risk across claims of different scope instead of one single bet.
Will I read the full draft before it is filed, and what should I be checking for?
Why ask it
You are the only person who can confirm the description is technically right. The other thing to hunt for is missing variations: other materials, a different order of steps, the cheaper version a competitor would build. New material cannot be added to an application once it is on file.
Which countries would you file in for a product like mine, and when do I have to decide?
Why ask it
Foreign filing deadlines run from your first filing date and do not move. An international application can postpone the country-by-country choice, at a price, and translations can end up costing more than everything you spent at home. A useful answer ties the list to where you would actually sell or manufacture, not to a map.
If a co-founder, a contractor or my employer had a hand in this, who owns it and who is named as inventor?
Why ask it
Who counts as an inventor is a legal question, and getting it wrong can undermine a patent later. Ownership is a separate one that turns on paperwork: contractor agreements, founder assignments, and the invention clause in an employment contract if you have a day job. An attorney who never asks to see those documents is leaving a hole.
If I keep improving the product after we file, how do the improvements get covered?
Why ask it
An application is frozen on its filing date, so later improvements generally need a filing of their own, and the route for that differs by country. Tell them what is on your roadmap for the coming year. If you began with a provisional, the months before the full application is due are the cheap moment to fold changes in.
Once we have filed, what can I say in public, and when may I call the product patent pending?
Why ask it
A filing date makes pitching and selling safer, but only for what the application describes. The words patent pending are for a product with an application actually on file, and misusing them can carry penalties in some countries. Some details are still better kept to yourself, and they can tell you which.
Costs
What is the realistic total to reach a granted patent, broken out by stage?
Why ask it
You want four numbers: search, drafting, government fees, and responses to examiner rejections. Few applications go through without at least one rejection, so a quote that stops at filing leaves out a large part of the real cost.
Do you bill flat fees by stage or hourly, and what gets charged that I would not expect?
Why ask it
Flat fees make budgeting possible but can create pressure to spend less time on a hard rejection. Either model works; what you need is the list of extras, such as phone calls, extensions of time, and formal drawings.
Do you charge for a first consultation, and what would I walk away with?
Why ask it
Some firms give a free first meeting and others bill for it. The free kind is usually a talk about process, not an opinion on your invention, while a paid one should produce something concrete such as a first view on patentability or a written estimate. Settle this when you book, so you know how much to prepare.
Do I qualify for reduced government fees as an individual or a small company?
Why ask it
Several patent offices, the USPTO among them, charge smaller applicants much lower official fees. Eligibility turns on things like headcount, income and whether you have licensed or assigned rights to a larger company, so let the attorney check instead of assuming. The discount applies to government fees only, never to the attorney's own.
When is each payment due: a retainer up front, at each stage, or on invoice?
Why ask it
Firms usually want the government fees and at least part of the drafting fee in hand before they file, since the patent office is normally paid at filing. Two things to pin down: whether an unused retainer comes back to you, and whether a flat fee still holds if the draft takes more rounds than they planned.
Is there any part of this I could do myself to bring the bill down?
Why ask it
Usually yes at the edges: a careful written description, your own first pass through the patent databases, clear sketches for the draftsperson to work from. Writing the claims yourself is where the saving tends to turn expensive, because wording that looks fine to an engineer can leave a wide gap. A fair attorney will name the homework that really shortens their time.
If my budget this year is limited, where would you spend it first?
Why ask it
This asks for a strategy instead of a menu. Reasonable answers include a search before anything else, or one carefully drafted application rather than three thin ones, and the reasoning shows you how they will treat you as a client.
If I have to stop paying partway through, what happens to the application, and what is the least I can spend to keep it alive?
Why ask it
Patent office deadlines keep running whatever your cash position, and a rejection left unanswered ends in abandonment. Paid extensions are common and a lapsed application can sometimes be revived, but the rules and prices differ by office. Knowing the minimum lets you plan a lean year instead of losing the filing.
After filing
How long from filing until the examiner responds, and until grant?
Why ask it
The wait usually runs to years and varies by technology area and by patent office. If your product will be obsolete before then, bring up accelerated examination here: what it costs, and whether you would qualify.
How often will I hear from you while the application is pending, and how fast do you reply when I write?
Why ask it
Long silences are normal: an application can sit in a queue for a year or more with nothing to report. What you want is a copy of everything filed and received, each deadline and its cost flagged well ahead, and a stated turnaround for your own emails. Many patent offices also let you look up a published application's status online, so you can check for yourself between letters.
What protection do I actually have while the application is pending, before anything is granted?
Why ask it
In general you cannot sue on an application, only on a granted patent, so patent pending is a warning and not a weapon. Some countries allow a claim reaching back to the publication date once the patent issues, on conditions. Have them explain what applies where you file, and whether a copier is grounds for asking the office to move faster.
When a rejection arrives, will you explain it to me and agree the response with me before you file it?
Why ask it
A first rejection is routine and says little about how things will end. The real decision in each response is what to give up, since an amendment that narrows a claim is very hard to undo, and that trade is a business call that belongs to you. A phone call to the examiner can settle in one conversation what letters take months over, so find out whether that is their habit.
If the examiner still refuses the claims I care about, what are my options at that point?
Why ask it
The usual routes are asking for further examination, appealing, taking narrower claims now while chasing the broader ones in a follow-on application, or stopping. Names and prices differ by country. The most useful part of the answer is the point at which they would tell you to stop spending.
Will my application be published before it is granted, and is there any way to avoid that?
Why ask it
Most patent offices publish an application about eighteen months after its earliest filing date, whether or not a patent ever follows. If it is then refused, competitors have your description and you have nothing in exchange. Publication can sometimes be held back, in the United States for example when you file nowhere else, so ask what applies to your plan.
If I come across a similar product or paper after we file, do I have to tell you about it?
Why ask it
In the United States applicants are expected to give the patent office the relevant prior art they know of, and holding it back can leave a granted patent unenforceable. Other countries treat this differently. The safe habit either way is to forward anything close and let the attorney decide what has to be filed.
After grant
How long will the patent last, and what exactly would it stop a competitor from doing?
Why ask it
For a standard utility patent the term in most countries is twenty years counted from the filing date, so the time spent in examination comes out of it; design rights have terms of their own that differ by country. Protection reaches only what the claims say. Ask them to describe the workaround a competitor would try first.
What do maintenance fees look like over the life of the patent, and who tracks the dates?
Why ask it
The pattern depends on the country: a few payments spread over the patent's life in the United States, a fee every year in many others, sometimes starting before grant. A missed payment that is not caught in time can end the patent for good. Get it in writing who watches the calendar, you or them.
Once it is granted, can someone still attack the patent or get it cancelled?
Why ask it
Yes. A grant is the patent office's view, and a competitor can ask the office or a court to look again, commonly as their answer when you accuse them of infringing. They would start with the prior art from your own search, which is one more reason to read those references yourself.
If a competitor copies this, what would enforcement actually involve?
Why ask it
Nobody polices a patent for you: spotting the copy and paying to act on it are both your job, and full litigation costs more than most small companies can carry. An honest answer starts with the cheaper moves: a letter, a licensing conversation, a marketplace takedown.
Do you handle disputes yourself, or would you hand me to a litigator?
Why ask it
Drafting applications and fighting over them in court are different practices, and a referral is normal. What you are testing is whether the person writing your claims has ever watched claims being picked apart in a dispute, because that experience tends to show in how carefully they draft.
If I never manufacture this myself, how would licensing or selling the patent work, and what is your part in it?
Why ask it
A patent meant for licensing should claim what a licensee would make and sell, which may not be your prototype, so say so before drafting starts. Most patent attorneys write and negotiate the agreement but do not find the buyer. Treat anyone who offers to market your invention for an upfront fee with caution.
Getting Value Out of a First Patent Meeting
Practical guidance for the conversation itself
What to Bring
A written description and drawings
Write out how the invention works, what problem it solves, and which part you believe is new. Rough sketches are fine. An attorney charging by the hour should not be paid to extract this from conversation, and the act of writing it usually clarifies what the actual invention is.
A dated disclosure history
List every time the invention left your control: conference talks, trade shows, a demo to a customer, a pitch deck sent without an agreement in place, a product page, a preorder, a crowdfunding campaign. Include dates. These facts decide whether you can still file, and guessing at them is the most expensive thing you can do in this meeting.
The closest things already on the market
Bring three or four competing products or publications you already know about, with links. It saves search time, and the attorney's reaction to them tells you quickly whether they understand your field.
Your business reason for filing
Blocking a specific competitor, satisfying an investor, licensing to a manufacturer and defending a product line all lead to different filing strategies. Say which one you are doing, because an attorney who does not know cannot advise on scope or on which countries matter.
Which Questions for Which Meeting
Before you book: The attorney
Several of these can be answered without a meeting. In many countries registration can be looked up on a public register, granted patents usually name the attorney or firm that handled them, and conflicts and confidentiality are fair to ask about by email. Arrive already knowing who you are talking to.
At the first consultation: Can it be patented, then Costs
A first consultation is short, so spend it on the two things that decide whether you go further: is there something here worth filing on, and what will the whole road cost. Lead with your disclosure history, because a problem there changes every other answer.
Before you sign: Strategy
Provisional or full application, claim scope, countries, inventorship and how improvements will be handled are the choices that shape the fee quote. Settle them before the engagement letter, not after the first invoice.
Once you are a client: After filing and After grant
These are the questions to ask your patent attorney over the years the application is pending. Raise the ones about updates and rejections at the start, so the working habits are agreed, and come back to publication, abandonment, maintenance fees and enforcement as each stage gets close.
Answers That Should Worry You
- They tell you the invention is patentable in the first meeting, before any search.
- They quote a single price with no breakdown, or the quote stops at filing and says nothing about office action responses.
- They never ask what you have publicly disclosed, or when.
- They cannot name a situation in which they advised a client not to file.
- They will not say who drafts the application or let you speak to that person.
- They talk about the patent as though it stops copying by itself, with no mention of what enforcement costs.
- They promise a specific outcome or a success rate without explaining how it is counted.
- They are vague about who tracks deadlines and maintenance fees after grant.
- They will file the application, or answer a rejection, without showing you the text first.
- They wave away the question of whether you might infringe someone else's patent, or treat your own patent as the answer to it.
Get These in Writing Before You Engage
- Scope of work: search, drafting, filing, and how many office action responses are included.
- Fee basis for each stage, hourly rates for anyone who may touch the file, and what is billed separately.
- Who is responsible for docketing deadlines, including foreign filing dates and maintenance fees.
- What happens to your file, drawings and correspondence if you change firms.
- Confidentiality of the disclosure you have already handed over.
- Whether the firm represents any of your direct competitors, and how conflicts are handled.
- That you will see and approve the draft application, and each response to the examiner, before it is filed.
- When payments fall due, and whether any unused retainer is returned.