20 Questions

Questions to Ask a Patent Attorney

Navigate intellectual property protection with strategic questions that help you understand patent processes, costs, and strategies while ensuring your innovations are properly protected.

1

What's your experience with patents in my industry or technology area?

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Why this works

Reveals their relevant expertise while helping you understand their track record with similar technologies and industries.

2

How do you determine if my invention is patentable?

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Why this works

Provides essential assessment while helping you understand the criteria for patentability and whether your invention qualifies.

3

What's the process for filing a patent application?

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Why this works

Explains the procedure while helping you understand the steps, timeline, and requirements for patent protection.

4

How much does it typically cost to file and prosecute a patent?

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Why this works

Addresses financial planning while helping you understand the costs involved in patent protection and budgeting.

5

What's the difference between a provisional and non-provisional patent application?

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Why this works

Clarifies options while helping you understand the benefits and limitations of different patent application types.

6

How do you conduct a patent search and what does it reveal?

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Why this works

Explains the research process while helping you understand existing patents and potential conflicts.

7

What's your approach to writing patent claims?

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Why this works

Reveals their strategy while helping you understand how they craft claims to maximize protection for your invention.

8

How do you handle patent prosecution and responding to office actions?

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Why this works

Shows their process while revealing how they navigate the patent office and address examiner concerns.

9

What's your experience with international patent protection?

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Why this works

Explores global options while revealing their capabilities for protecting your invention in multiple countries.

10

How do you ensure my patent application meets all legal requirements?

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Why this works

Addresses compliance while revealing their approach to meeting patent office requirements and avoiding rejections.

11

What's your approach to working with inventors and understanding their technology?

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Why this works

Shows their collaboration style while revealing how they work with you to understand and protect your invention.

12

How do you handle patent infringement issues and enforcement?

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Why this works

Explores protection while revealing their approach to enforcing your patent rights and handling infringement cases.

13

What's your strategy for maximizing patent protection and coverage?

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Why this works

Reveals their approach while helping you understand how they ensure comprehensive protection for your invention.

14

How do you handle patent portfolio management and maintenance?

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Why this works

Addresses ongoing needs while revealing their approach to managing multiple patents and maintaining protection.

15

What's your experience with patent litigation and disputes?

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Why this works

Shows their capabilities while revealing their experience with patent conflicts and legal proceedings.

16

How do you stay current with patent law changes and developments?

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Why this works

Demonstrates their commitment while revealing how they maintain expertise in evolving patent regulations.

17

What's your approach to patent licensing and commercialization?

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Why this works

Explores business opportunities while revealing their capabilities for helping you monetize your patents.

18

How do you handle patent office communications and deadlines?

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Why this works

Addresses process management while revealing their approach to meeting patent office requirements and timelines.

19

What's your success rate with patent applications and approvals?

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Why this works

Reveals their track record while helping you understand their experience and success with patent prosecution.

20

What's the most important thing for inventors to know about patent protection?

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Why this works

Provides key guidance while revealing what they consider most critical for inventors to understand about patents.

Mastering Patent Protection

Expert tips and techniques for getting the most out of these questions.

Best Practices

Document Your Invention

Keep detailed records of your invention process, including sketches, notes, and prototypes. This helps establish your invention date and development process.

Maintain Confidentiality

Don't disclose your invention publicly before filing a patent application. Public disclosure can prevent you from obtaining patent protection.

Work with Experienced Attorneys

Choose attorneys with experience in your technology area. Patent law is complex and specialized knowledge is essential for success.

Question Sequences

The Patentability Assessment

1
How do you determine if my invention is patentable?
2
How do you conduct a patent search and what does it reveal?
3
What's your experience with patents in my industry or technology area?

The Process Explorer

1
What's the process for filing a patent application?
2
How much does it typically cost to file and prosecute a patent?
3
What's the difference between a provisional and non-provisional patent application?

Common Pitfalls

Don't Delay Filing

Don't wait too long to file your patent application. The first to file gets the patent, and delays can cost you protection.

Avoid Public Disclosure

Don't disclose your invention publicly before filing. This includes publishing, presenting, or discussing it with others without confidentiality agreements.

Don't Ignore Prior Art

Don't assume your invention is novel without conducting a thorough search. Prior art can prevent patentability and invalidate your patent.

Conversation Templates

The Patentability Evaluator

1
Step 1: Start with: "How do you determine if my invention is patentable?"
2
Step 2: Follow with: "How do you conduct a patent search and what does it reveal?"
3
Step 3: Deepen with: "What's your experience with patents in my industry or technology area?"

The Process Navigator

1
Step 1: Begin with: "What's the process for filing a patent application?"
2
Step 2: Explore with: "How much does it typically cost to file and prosecute a patent?"
3
Step 3: Connect with: "What's the difference between a provisional and non-provisional patent application?"

Further Reading

"Patent It Yourself" by David Pressman
"The Patent Guide" by Carl W. Battle
"Patent Law Essentials" by Alan L. Durham

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