I'm ready to hire a patent attorney/agent.

[spiderweb73]

What is the name of your state? Georgia

I have invented a toy for pets. To this point, I have a very rough working model, early sketches, pictures, and video of one of my animals playing with the new toy.

My budget is limited. I am willing to do some work myself, but would like to hire a patent agent or attorney to help advise me on the correct steps to take. What should I look for while making my final decision on whom to hire? How do I make sure I will get the best deal for me financially? Also, I’m not sure how much information I should give to anyone before I hire him or her.

There are parts of my invention that I’m sure have already been patented, but the functions are very different. I don't want any legal trouble later because I hired someone that was not qualified to give me the help that I require.

 

[divgradcurl]

Well, first off, you can find a patent attorney or agent in your area via the USPTO website, www.uspto.gov. Click on patents, then click on "find an attorney\agent" -- I would give you a direct link, but I can't connect to the USPTO site right now...

My budget is limited. I am willing to do some work myself, but would like to hire a patent agent or attorney to help advise me on the correct steps to take. What should I look for while making my final decision on whom to hire?

Well, first off, you may not find an agent or attorney who will let you do part of the work, because there may be issues with their malpractice insurance provider. But you never know, you could ask around. Typically an agent will be cheaper than an attorney, and a solo or small firm attorney or agent will be cheaper than one who works for a large law firm. For just getting a apatent, an agent is as good as an attorney.

In deciding who to go with, price of course is a factor, as is location -- are you comfortable working with someone clear across the country via telephone and mail and email, or would you prefer to have someone you can talk to face-to-face. If you only want to work face-to-face and don't live in a big city, that might limit your options considerably.

The other important factor is experience. Experience isn't the be-all-end-all -- someone with 30 years experience isn't necessarily going to produce a better product than someone with 5 years of expereince -- but you don't want to necessarily go with someone for him this is their first patent either. One thing experience buys you is effciency -- fi you are paying by the hour, you want the most efficient agent you can get. If you are paying a flat fee, then efficiency is largely their problem...

Finally, you want someone who has experience in your area -- consumer products -- and who is used to working with solo inventors. Search the USPTO website to find someone, you can use the web, you can use your phonebook, etc. You can also see (especially if you live in a city, or an area with lots of inventors) if there are any inventor "forums" or groups that might be able to recommend an attorney or agent.

How do I make sure I will get the best deal for me financially?

Most agents should be in roughly the same range, there probably won't be huge disparities in price unless you start looking at large (50+ attorney) law firms. Further, there are going to be fees associated with the USPTO that will be the same regardless of who you go with.

Also, I’m not sure how much information I should give to anyone before I hire him or her.

Agents have basically the same duty of confidentiality as do attorneys, so you shouldn't need to worry about that. Anything you say to an agent or attorney that is part of negotiations for representation is subject to the duties of confidentiality.

There are parts of my invention that I’m sure have already been patented, but the functions are very different. I don't want any legal trouble later because I hired someone that was not qualified to give me the help that I require.

An agent or attorney will be able to guide you here.

 

[spiderweb73]

Thanks for you help.

Wow, thanks for such a fast response!

are you comfortable working with someone clear across the country via telephone and mail and email, or would you prefer to have someone you can talk to face-to-face.

From the information I have read, there are a large number of patent attorneys in my vicinity (Atlanta). I’m not sure if that means that there will be large number of patent agents also. I would have no problem working only over the phone and/or by e-mail either, if I found someone out of my area.

if you are paying by the hour, you want the most efficient agent you can get. If you are paying a flat fee, then efficiency is largely their problem...

Where can I research the average number of hours and the cost per hour it should take for my product? Is it usually better to go with a flat fee, or a per hour fee?

Finally, you want someone who has experience in your area -- consumer products -- and who is used to working with solo inventors. Search the USPTO website to find someone, you can use the web, you can use your phonebook, etc. You can also see (especially if you live in a city, or an area with lots of inventors) if there are any inventor "forums" or groups that might be able to recommend an attorney or agent.

The Inventor Associates of Georgia holds meetings once a month in my area. Unfortunately, the January meeting was last week. The secretary of the group is a patent agent, but I don’t think he works with consumer products. Should I make it clear that I only want to work with an agent that has experience in my field, and with solo inventors?

Most agents should be in roughly the same range, there probably won't be huge disparities in price unless you start looking at large (50+ attorney) law firms. Further, there are going to be fees associated with the USPTO that will be the same regardless of who you go with.

Are the fees usually over once the patent has been received, or are there fees based on future earnings from the product? Is this something that is usually part of negotiations?

 

[divgradcurl]

From the information I have read, there are a large number of patent attorneys in my vicinity (Atlanta). I’m not sure if that means that there will be large number of patent agents also. I would have no problem working only over the phone and/or by e-mail either, if I found someone out of my area.

You can search for agents in your area here: http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html

Where can I research the average number of hours and the cost per hour it should take for my product? Is it usually better to go with a flat fee, or a per hour fee?

Most patents are flat fee, whether done by an agent or an attorney, although some firms will charge by the hour. How long an application will take and the cost is extremely variable, and depends on who is doing it along with the specific technology, and if you want any "extras" (such as a prior-art search or patentability opinion, for example). You can discuss this with the agents and attorneys you contact.

Should I make it clear that I only want to work with an agent that has experience in my field, and with solo inventors?

You should only work with someone with whom you are comfortable -- if asking such questions will make you more comfortable, then ask away. The one thing that is useful is asking about working with solo inventors -- agents and attorneys who work primarily with solo inventors are usually better equipped to deal with the peculiarities of working with solos (solos are generally more sensitive to cost issues than companies are -- plus solos have a reputation for requiring more "handholding" during the prosecution process...).

Are the fees usually over once the patent has been received, or are there fees based on future earnings from the product? Is this something that is usually part of negotiations?

No. After a patent issues, there are maintenance fees to pay:

"Maintenance Fees

All utility patents that issue from applications filed on and after December 12, 1980 are subject to the payment of maintenance fees which must be paid to maintain the patent in force. These fees are due at 3 1/2, 7 1/2 and 11 1/2 years from the date the patent is granted and can be paid without a surcharge during the “window-period” which is the six-month period preceding each due date, e.g., three years to three years and six months. (See fee schedule for a list of maintenance fees.) In submitting maintenance fees and any necessary surcharges, identification of the patents for which maintenance fees are being paid must include the patent number, and the application number of the U.S. application for the patent on which the maintenance fee is being paid. If the payment includes identification of only the patent number, the Office may apply payment to the to the patent identified by patent number in the payment or the Office may return the payment. (See 37, Code of Federal Regulations, section 1.366(c).)

Failure to pay the current maintenance fee on time may result in expiration of the patent. A six-month grace period is provided when the maintenance fee may be paid with a surcharge. The grace period is the six-month period immediately following the due date. The USPTO does not mail notices to patent owners that maintenance fees are due. If, however, the maintenance fee is not paid on time, efforts are made to remind the responsible party that the maintenance fee may be paid during the grace period with a surcharge. "

However, you do not pay the USPTO for royalties or antyhing like that. You may need to pay the IRS, but not the USPTO...

 

[spiderweb73]

Very useful information.

Thanks for your help! Now I can use my time to do some other research.

 

[Susie39]

Filing for patent

You mentioned that you felt that parts of your invention was already patented. Look on the web site for the US Patent Office and see if these things have already been pantented. There is a huge backlog for patents being approved and it will take at least a few years to get it, even if you file for it now.
When contacting a patent attorney, see how long he has been doing this type of work and what his success level is.
Good luck.