Questions to Ask a Patent Attorney
For inventors and small company founders sitting down with a patent attorney for the first time. These questions cover whether your invention is worth filing on, what the whole process costs stage by stage, who actually writes your claims, and what happens if someone copies you.
The questions
Open any question for the note
Are you a registered patent attorney or agent, and what is your technical background?
Why ask it
Only practitioners registered with the patent office can file and argue an application on your behalf, and general business lawyers occasionally take the work anyway. The degree matters too: someone whose training is mechanical will struggle to describe a software pipeline in claim language.
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 one: if the claims ended up narrowed to something commercially useless just to get an allowance, you have learned more than any answer could tell you.
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 the value of a patent is set almost entirely by whoever writes the claims.
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.
Is a patent the right tool here, or would a trade secret or a design patent serve me better?
Why ask it
A patent publishes your invention in exchange for a right to sue. For a process nobody can reverse engineer from the product, that can be a bad trade. Notice whether they can describe a time they told someone not to file, because that advice earns them nothing.
What will a prior art search cost, and what will you do if it turns up something close?
Why ask it
Search fees are small next to drafting fees, and the point is to fail early and cheaply. Ask whether you will see the actual references and their honest read of them, or only a one-line conclusion.
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. Most applications are rejected at least once, so a quote that stops at filing describes roughly half the real cost.
Would you start with a provisional application in my case, and what does that actually buy me?
Why ask it
A provisional holds a date for twelve months, but only for what it genuinely describes, so a thin two-page filing protects almost nothing. Ask whether they draft provisionals to the same standard as full applications or treat them as placeholders.
Have I already done something that damages my filing: a sale, a demo, a talk, a crowdfunding page?
Why ask it
Public disclosures and offers for sale start clocks, and in most countries outside the United States they end your rights on the spot. Tell them everything with dates, because this is the one fact that cannot be repaired later.
How long from filing until the examiner responds, and until grant?
Why ask it
The wait runs to years and varies a lot by technology area. If your product will be obsolete before then, that is the moment to ask what accelerated examination costs and whether it is worth it for you.
How will you decide how broad to make the claims, and what happens when the examiner pushes back?
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 risk across claims of different scope rather than one single bet.
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 and do not move, and translation costs can exceed everything you spent at home. A useful answer ties the country list to where you would actually sell or manufacture, not to a map.
If my co-founder and a contractor both contributed, who owns this and who gets named as inventor?
Why ask it
Inventorship is a legal question with wrong answers that can sink a patent later, and ownership depends on assignment paperwork you may never have signed. If they do not ask to see your contractor and employment agreements, they are not protecting you.
What do maintenance fees look like over the life of the patent, and who tracks the dates?
Why ask it
Fees fall due years apart and rise each time, and a patent that lapses for a missed payment is simply gone. Get the answer about who is watching the calendar, you or them, in writing.
If a competitor copies this, what would enforcement actually involve?
Why ask it
A patent is a right to sue, not a fence, 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
Prosecution and litigation are different practices and a referral is normal. What you are testing is whether the person drafting your claims has ever had to defend claims in front of a judge, because that experience shows up in the drafting.
How do you want me to send technical updates, and how quickly do you usually reply?
Why ask it
You will be sending sketches and test results for years. If the answer is vague on response times, ask what happens when a deadline falls in a week they are stuck in a hearing.
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.
What is the most common reason applications like mine get abandoned?
Why ask it
Usually the money runs out mid-prosecution, or the owner loses interest once the only available claims are narrow. Someone who has watched it happen describes the pattern; someone who has not says something generic about paperwork.
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.
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.
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.
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.