How To Get The Most Out Of A Free Consultation
This is the eighth post in my series “How To Find A Patent Attorney: My Guide for Performing Your Own Patent Attorney Search,” and will cover “How To Get The Most Out Of A Free Consultation.” If you have read my previous posts, then you know have a list of patent attorneys and an idea of patent attorney costs and expectations. Now, it’s time to for the free consultation.
Step 1: Scheduling The Free Initial Consultation (a.k.a. A Preliminary Conflicts Check)
The first step in interviewing a patent attorney is to schedule the consultation. I suggest that you start by sending the patent attorney an email that contains the following information. Remember, patent attorneys are terrified of losing money due to conflicts (especially at larger firms) so you may need to assure them that there is little or no danger or a conflict before they will agree to speak to you.
- Subject Line: I was referred to you by [[name]]. I am interested in your patent services. (This gets your email opened)
- Your Referral Source (A referral gives you credibility)
- Your Name (Needed for the conflicts check)
- The Name of Your Company, including parent companies, subsidiaries, etc. (Needed for conflicts check)
- Your Field (Cell phones, DNA, drugs, plastic dolls; need for conflicts check)
- The Service You Seek (patent preparation and prosecution, patent opinions, patent licensing, etc.)
- Suggest three times when you are available for the discussion
- DO NOT include any confidential information about your invention or your business
For example, you email might read:
Subject: I was referred to you by Friendly Bob for help getting a patent
Hello Mr. Smith;
Bob referred me to you. I am one of the founders of BioSun. We develop anticancer drugs. Our parent company is ChemiMoon. We are interested in getting a patent on a diazole that shows promise for treating colon cancer.
Are you available Monday or Tuesday of next week at 1 pm eastern?
Step 2: Preparing For And Conducting A Free Consultation With A Patent Attorney
The first goal of the free consultation is to determine if you and the patent attorney are a good fit, not to try and get free legal advice. Also, keep in mind that the patent attorney will be evaluating you for a good fit. It is important to conduct yourself in a courteous and professional manner. Do NOT disclose any confidential information about your invention or your business plans.
If you have examined web page of the patent attorney and verified their bar credentials, then you probably already know about their education, experience, and rates. Now you are looking for specifics. I suggest asking the following questions. These questions presume that you are trying to obtain a patent. They would need to be adapted for another service, such as opinion work or licensing work. Also, the patent attorney should have a great deal of experience with these conversations, so they should be asking you questions too.
- Small talk if any
- As I mentioned in my email, I am interested in drafting and filing a patent application. I may also need some strategic filing advice.
- Do you (i.e. the firm) have the bandwidth to draft a specification for me by [proposed date]?
- Who will be the primary patent attorney or patent agent preparing my application? May I speak or meet with them?
- What is their technical background? How many years of industry or practical experience do they have in [my technical field]?
- How many years of patent preparation and patent prosecution experience does this person have (excluding litigation and licensing)?
- About how many patents has this person prepared?
- Has this person prepared any patents in my technical area? About how many?
- Can you send me one or two of patent applications they wrote, preferably in my field of technology?
- Does your firm charge a flat fee or an hourly rate?
If the firm charges a flat fee:
- What is your fee for drafting a provisional patent application?
- What is your fee for drafting a non-provisional PCT patent application?
- What is your fee for drafting a non-provisional U.S. utility patent application?
- Does your flat fee include the cost of Drawings and/or the submission of an Information Disclosure Statement (IDS)?
- What is your flat fee for preparing and filing a Response to an Office Action?
If the firm charges an hourly rate:
- What is the billing rate of the primary patent attorney?
- Who will review the work? What is the reviewer’s billing rate?
- Can you give me an estimate for how much your service fees will be to draft a provisional, non-provisional PCT patent application, or a non-provisional U.S. utility patent application?
- Is this a do-not-exceed estimate? If not, under what specific circumstance would you envision departing from your estimate? How often does that happen?
- How will you notify me of further developments in my application?
- How do you arrange billing?
- Is there any information that you need from me?
- If we were to proceed, where would we go from here?
- Can you send me a copy of your engagement letter?
Afterward: Do you want to work with this person? Did your personalities and communication styles work well together?
The free consultation for responding to an Office Action or providing opinion work would be the same, but you would ask about their specific experience and costs for providing an opinion.
Well, what do you think? Is this patent attorney the one?
The last post in my “How To Find A Patent Attorney: My Guide for Performing Your Own Patent Attorney Search” series will be “The Conclusion.” Click here for the next post.