Q&A with an IP Attorney

Interview with Kevin Flynn, Flynn IP Law

This series will feature a guest each month to get his/her insights on topics important to you. This month we interview Kevin Flynn with Flynn IP Law

Q – When should I start the conversation with a patent attorney?


A
– If you are thinking about it, then it is not too early to at least start the conversation.

  1. A patent attorney is like an external team member. You will want good chemistry between your development team and the patent attorney so talk to a few.
  2. Working with a patent attorney can help you tune your efforts to things that may be easier to protect.
  3. A patent attorney may be able to point out that some types of innovation are hard to protect even if you do get a patent. You should know this before you make representations to investors or granting agencies about your ability to protect your innovation with patents.
  4. You may want to work with the patent attorney to look at what patents are issued or what applications are in the pipeline that may impinge on your freedom to operate. It is cheaper to make a change in course early in the project.

Q – What criteria should be considered when picking a patent attorney?


A
– Several criteria matter. Some matter more to some clients than others.

  1. Does the attorney have a conflict? This is the first criterion as you should not blurt out your secrets until you have established that neither the attorney nor others at the firm represent someone in the same space as your invention.   If you know that company X is a possible candidate to buy your company then you should not work with a firm that represents company X.
  2. Does the patent attorney have the capacity to understand and explain your technology to the patent examiner? This means can you educate the patent attorney to become sufficiently fluent in your technology? If the patent attorney already knows enough to join your design team and make contributions on your invention then something is really wrong. Either your design team is operating at a low level or the patent attorney is doing work for someone in this space and you may have a conflict. Some large patent firms define conflict very narrowly and that may not be a good fit for a young company that may change focus a bit over time.   The patent attorney will need technical expertise to help flesh out the claims and to negotiate with the patent office. If the claims are going to be on a chemical, then the patent attorney needs to be able to wallow in genus and species distinctions, isomers, and other concepts in chemistry. However, if you have invented a better way to fill and seal a chemical drum, the patent attorney may need to be a mechanical engineer to discuss the way the seal is created even if there are a few paragraphs in the patent application that list types of chemicals that can be shipped in this chemical drum. Thus, certain types of companies straddle the need for biologist/chemist patent attorneys and electro-mechanical patent attorneys. Such a company may need two different sets of patent attorneys.
  3. Can you work with this patent attorney under difficult circumstances? If the patent attorney is arrogant or won’t respond to your questions with an answer that makes sense, then you don’t want to work with this patent attorney. Patent attorneys have a federal license so you can pick one from anywhere in the country. Find one that is a good match.   This is not like the attorney that closed the sale of your house. This is someone that will see your product details before they are polished up and someone that will have to admit that they did not understand portions of your disclosure. If you cannot work well together find another choice.
  4. Price is tricky. Full disclosure, this process is very expensive and there is no guarantee that you will get a patent at all. What you want is value for what you spend. For something like patent licenses, you may end up paying less for the project if you pay 50% more per hour for attorney A versus attorney B as attorney A can get things done quickly and reuse a collection of earlier work. While patent attorneys have less opportunity to reuse work from one client to another, there are still times when paying for experience gets things done faster. I have seen many a North Carolina company start out with a rock star patent attorney in NYC or DC only to notice that despite the very high bills that most of the work is being done by someone one to three years out of law school. Frequently they can move that work to patent attorney here in NC and pay less for someone with 10 to 20 years of experience. Another factor is whether you have someone that will work to move the ball to the end of the process or just kicks the can down the road. If you get an inexpensive patent filing that is not well suited to get you claims, have you saved any money or squandered your opportunity to protect your core concepts? If the patent attorney makes minimal responses to Office Actions and the process drags out for years longer than necessary, was that a bargain?
  5. How much of the patent attorney’s work is with young companies? There are differences in working with a young company without internal legal departments versus working for a Fortune 100 company that already has a thousand patents. Some patent attorneys like to do their narrow piece of out-sourced work for a legal department. Some enjoy working with young companies and walking the company through the patent process.

Q – What can I do to prepare for the first meeting with a patent attorney?


A
– The first meeting with a patent attorney can be for coffee and you don’t need to do much to prepare beyond reading the patent attorney’s LinkedIn profile to make sure that this may be a match for what you need.

  1. Other useful things may be to use Google Patents to start looking at patents in your space. Read a few end to end. Not all of it will make sense and you may need to have a second cup of coffee to make it through. But you will have taken a big step in understanding the level of detail and the way the game is played. You will gain credibility with the patent attorney as someone who is going to take this process seriously and wants to be educated on how to get the most out of the process.
  2. Make a wish list of what you would like to prevent your competitors from doing to emulate your product. Be reasonable as you cannot preclude them from doing what was being done before your invention but this focus will help the patent attorney give you advice relevant to your space.

Q – What should be budgeted for patent work for the first year?


A
– This is like asking, what should it cost to build a house. It all depends on what you want. A company that really needs to file four or five patent applications will pay more than one that just needs to file one application without alternatives. Some inventions take less time to explain than others.

The process to get a US patent can be accelerated into just one year (with an extra fee) but is usually three to four years with some types of inventions taking five or six years. The biggest cost is getting a well written patent application written. Depending on what sort of invention and how many nuances need to be covered, a first patent application for a new business normally falls in the range of $7 to 14K. Sometimes a company starts with a provisional application which can be less expensive. Warning–to the extent that the provisional application is less expensive because it contains less detail or involved less thought than a normal application, there is a substantial risk that the provisional application is not all that you needed. The only real difference between a well-written provisional and a well-written non-provisional application is the formality and redundancy found in the non-provisional. The aggregate amount of detail should be the same and the level of thought on what should be here should be the same.

A budget projection may be $10K in year 1, $0K in year 2, and $5K in years 3 and 4. This is for a single utility application in the US. A patent attorney that listens to your desires for outside US filings, can give you a rough estimate for other countries. For a more complicated technology, the answer may be $12K, $1K, $0K, $6K, $6K respectively.

 

Q – What else should we discuss with a patent attorney?


A
– A young company needs to know the range of tools that can be used including design patents, trade secrets, copyrights, and other specialized options.

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