patents
Patent Application Due-Diligence
<p>When engaging an IP attorney, I would like to understand what the inventor can / should prepare before meeting with the attorney.  Assume the context is a system and method utility patent application (USPTO) and that a provisional patent application has been filed.</p>

<p>I can imagine a list of items an attorney would need.  </p>

<ul>
<li><p>Is there a name for such a list?  (so that it could be Googled)</p></li>
<li><p>What items would be on the list?</p></li>
</ul>

<p>Many attorneys would have an "intake form" that they would like you to complete in advance, and every lawyer will want your name and contact information at a first meeting. But, other attorneys would prefer to meet with you first, without getting details about the work to be done, as many patent applicants are very reluctant to put information in writing that is shared with others and many patent applicants don't know what is relevant. </p>

<p>There is no special terminology for the things that you should prepare for prior to meeting with an attorney. And, anyone who completed a provisional patent application is not so half-baked in their idea that it is premature to meet with a patent lawyer. Having done a provisional patent application is more than enough due diligence and preparation for such a meeting. </p>

<p>The marginal cases where preparation by clients is often lacking are those cases where the concept of the invention isn't fully fleshed out yet and the inventor is trying to work with a patent lawyer to figure out what part of "idea space" isn't already protected by patents.</p>

<p>There are basically three kinds of information that are relevant:</p>

<ol>
<li><p>When was the invention invented, made public, or shared with anyone? Is there anyone else who could be considered a co-inventor? For example, if you have an employment agreement discussing intellectual property, you should bring it.</p></li>
<li><p>You would need your full provisional patent application, which will explain most of the necessary information but may need to be clarified for a final application. If visual aids are helpful to explaining your invention or you have prototypes small enough to bring with you, you should bring them, even if they are beyond the scope of the provisional patent application's contents.</p></li>
<li><p>You ideally should do some due diligence regarding "prior art" to provide some assurance that the idea you propose hasn't already been patented or discovered, but not every patent applicant has the ability to do such a prior art search. At a minimum, you should be able to say in good faith that you've never seen a similar invention and explain why you think personally that your invention is novel. Generally, you should not order a professional patent search before you have discussed it with your patent attorney. But, if you are able to do so and have reviewed existing patents, reviewed literature you are able to access, and have done some Google searches for similar ideas, that would be more than reasonable preparation. But, don't delay meeting with a patent lawyer because you haven't done those things. A patent lawyer needs lead time to prepare the application by the deadline for doing so (ideally, several months, and at a minimum, several weeks to a couple of months).</p></li>
</ol>

<p>In addition, you should be prepared to discuss why your invention is not obvious to someone skilled in the relevant field and what utility your patent has to a user of the invention. Similarly, you should be ready to discuss the larger context of the field in which you have an invention, such as how others usually deal with the issue that your invention addresses in the status quo and what other notable new inventions there are in that field. "Buzz words" related to your kind of invention are also very helpful for doing searches of prior art.</p>

<p>Finally, you should be prepared to demonstrate that you have the capacity to pay for the patent lawyer's work. Patent lawyers almost never do pro bono (i.e. charitable) patent work for individual inventors (sometimes they might, for example, for a university clinic aimed at inventing things for use in the Third World), and are loathe to do work on a contingent or on credit basis, although sometimes they would be willing to work on credit if you could provide security for the debt beyond the patent itself (e.g. putting the equity in your home up as collateral).</p>

<p>A patent lawyer would almost always charge more than $10,000 to do the work beyond an initial consultation (which wouldn't be free but might cost $100-$1000), and often a patent could cost $100,000 for each patent for legal work, if it was at all complex. </p>

<p>Patent lawyer have among the highest hourly rates of all kinds of attorneys. So, the more clearly thought out you are, the better organized your paperwork is, and the more efficiently you can communicate your invention, the less you will pay for meeting with the patent lawyer while "the meter is running."</p>

<p>Even in the unlikely case that the patent lawyer will do the work on credit, the patent lawyer will at a minimum insist that you provide the filing fees up front. If you are truly broke, you need a business partner to finance the patenting process for you. You can look at the relevant fee schedules at the patent and trademark office website. The patent lawyer would also expect any out of pocket costs for things like a professional prior art search, having quality drawings prepared, courier fees, and mailing costs to be paid in advance, even if doing some of the legal work on credit. The prior art search is the most expensive item and it would usually cost in the low single digit thousands of dollars.</p>
