Patent pending Featured

9:45am EDT July 22, 2002

You’ve taken the time and spent the money to invent a product or technology, and now you’ve got to protect it. But getting a patent will prove daunting, to say the least. Here’s how to find help:

1. Give up the idea of doing it yourself. The law has arcane provisions that can trip up an amateur. You can also benefit from an attorney’s outside viewpoint.

2. Gather information about patent attorneys. Good sources include law firms, local bar associations, legal directories such as the Martindale-Hubbell Law Directory, the Internet, the United States Patent and Trademark Office and telephone directories.

3. Evaluate attorneys. Ask detailed questions about scientific and legal education and experience. Make sure the attorney has been admitted to practice before the U.S. Patent and Trademark Office.

4. Ask prospective attorneys to preview the patent process. In going through the process, look for a patentability search before preparing a patent application; advice on licensing; availability of foreign patent protection; and time involved in each phase of the process.

5. Ask about fees. It is entirely appropriate to discuss fees and other costs before hiring an attorney and explore ways that costs can be minimized.

6. Feel comfortable with the attorney. Obtaining a patent is a team effort, and you and the attorney should have similar work styles and expectations.

7. Ask for references, which may include clients, attorneys and others with direct knowledge of the individual’s skills.

8. Request examples of work product, including examples of issued patents, that are publicly available. Confidentiality may limit how much the attorney may reveal.

9. Get it in writing. In some states, the attorney must write an “engagement letter” specifying the scope of the work, fees, special payment arrangements and other terms of the attorney-client relationship. In all cases, it’s a good idea.

10. Tailor your search to the situation. Your invention or plan may involve unique circumstances. Keep them in mind when evaluating patent attorneys.

The inventor or business owner who searches diligently and asks the right questions can find the right attorney, not only in seeking the patent, but in all aspects of protecting his or her inventions and other intellectual property.

Arnold B. Silverman is an attorney with Pittsburgh-based law firm Eckert, Seamans, Cherin & Mellott.