One morning, you wake up before the alarm goes off – how often does that happen? A brilliant idea just popped into your head for a new, improved product- a solution to a problem – a new invention.
You're just too excited to go back to sleep.
Let me read your mind for a moment. Here are your first three thoughts:
- Wow! This is a great idea – I will make a lot of money from this invention, unless …
- Someone steals my idea – and they make a lot of money from it, so …
- I need to find a patent attorney to protect my idea
This post will focus on 3. – finding a patent attorney for your invention.
Finding a Patent Attorney is Easy, but …
Back in 2002 with my first product, I was a complete novice to the world of inventing. I realized that, without a patent, I would have nothing to sell except a product – that anyone could duplicate and sell as they chose with no legal repercussions whatsoever. I decided that my first step should be to find a nearby patent attorney to file and prosecute my patent.
So, I grabbed a phone book – yes, people really did use the Yellow Pages back in the stone ages (Google was a small 4 year old company then, not the indispensable goliath it is today). I found a nearby patent attorney, met him and the rest is history.
But, I would never recommend to an inventor today to take the steps I took back then. Let me take you through the three big mistakes I made and why you don't want to make the same mistakes.
The first mistake was to quickly find a patent attorney and file a utility patent. You should instead do your own search, for free, by looking in retail stores, websites like Amazon and Alibaba, and lastly searching the US Patent Office database to see what else is out there – maybe a product almost identical to your invention. Only if you feel your product is distinctive from others out there should you consider finding a patent attorney.
My second mistake was focusing upon convenience – finding a nearby patent attorney. Nearby is nice, but not at all particularly important as almost all work is done via telephone or online.
My third mistake was that I just looked for any patent attorney, rather than a great patent attorney – one that would be perfect for my own particular goals and needs. At that time, in my naiveté, I guess I thought of a patent attorney as a commodity – I thought any attorney would suffice to file a patent for my invention. Don't make that mistake! A great attorney could be the difference between having a strong patent issued for your product and having no patent allowed.
The good news is that I did indeed find a great patent attorney nearby who fit my needs. But, it was purely by accident as I did just about everything wrong.
A Better Way – How to Find a Great Patent Attorney
If looking for a nearby patent attorney right away, as I did, is the wrong way to do things, what is the right way, or a better way?
You want to find either a patent attorney or a patent agent who understands your needs and circumstances.
A patent agent differs from an attorney only in that the agent cannot represent you in a court of law – for example in a patent infringement lawsuit. But an agent can prosecute a patent equally well as a patent attorney. Often, agents are more economical than are patent attorneys. So, make sure to consider agents as well as attorneys. I will refer only to ‘attorneys' in the rest of this post, but be aware that everything I say applies equally to patent agents.
Generally, independent inventors are poorly served by large intellectual law firms, it is best to go with smaller firms. Why?
Large IP firms typically have corporate clients with large IP budgets. Often, such clients want 5 or 10 patents to cover a single product, which is comprehensive coverage, but also very expensive. Most inventors simply cannot and should not spend $20,000 or more on patent protection. In most cases, one or sometimes two patents are plenty of protection for your invention.
Your goal should be to find an attorney who serves primarily other inventors, typically these are small one-person patent firms. My attorney, for example, has prosecuted several patents for his own invention – he certainly understands what inventors need.
Where Can I Find Patent Attorneys?
I suggest that you join a local inventors group. Inventors groups typically have patent attorneys, prototypers and others as members. Check the attached cheat sheet for a link to a list of inventors clubs across the US. Also, there is a list of every registered patent attorney on the US Patent and Trademark (USPTO) website. It is a bit tricky to find the list on the USPTO website, so, the attached cheat sheet also has a direct link to the attorneys list.
Lastly, keep in mind that you will have a multi-year relationship with your patent attorney. It is important to locate a person who understands your needs and goals and with whom you are comfortable working.