

Solo engineer trying to file patent: Can I get useful legal help for ~$1-2k? - notnot

I&#x27;m a Silicon Valley engineer and I&#x27;ve developed a prototype for a computer peripheral.  I don&#x27;t know if it&#x27;s patentable but it might be. I work a full-time job unrelated to this patent so I have more money than time right now and I&#x27;d like to pay to have someone help me determine if this idea is worth pursuing.<p>I&#x27;m looking for legal assistance at a cost of ~$1-2k to help me determine if the idea is patentable and to help write a patent.<p>Does anyone know if this amount of money could allow me to sit down with a professional in the field of technology IP and talk over the idea to determine which, if any, of the aspects are patentable and how to best approach writing the patent?<p>Any and all advice and perspectives are appreciated!
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tzs
There are two groups of people who can legally hire themselves out in the USA
to give advice on patentability and help write a patent application (and also
deal with the patent office for you on all matters related to to your
application, including appealing decisions of the examiner).

These are "patent attorneys" and "patent agents".

One becomes a patent agent by meeting certain background requirements in
science or engineering defined by the Patent Office, and passing an exam on
patent law and procedure given by the Patent Office.

One becomes a patent attorney by satisfying the requirements for a patent
agent and by becoming an attorney.

Since a patent attorney is an attorney, they can give advice beyond just
patentability and can do more than just deal with the patent office. They can
draft contracts to license you invention. They can draft confidentiality
agreements to make people sign that you hire to help develop you invention.
Once the patent is issued, they can litigate for you against infringers.

This comes with a price. Patent attorneys will generally cost more than patent
agents. At the stage you are at, it doesn't sound like you need anything done
that requires an attorney. You just need patent advice and reprentation at the
patent office. Thus, since you are on a budget [1], you should take a look at
patent agents.

[1] People not on a budget should probably consider patent agents more, too. I
think that a lot of people just assume that they need a patent attorney to get
a patent drafted and filed.

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pbhjpbhj
My recommendation would be to do a very simple patent search - I've always
found the EPO Espacenet superior to the USPTO offering, Google's is even
easier but less refined. Find a few applications for things in the region of
your invention in the last few years and look at the patent documents. You'll
see the names of the patent attorneys in the filing info. Contact them and ask
them this question. If you can find the IPC code for your idea look at maybe
20 sets of metadata and look for similarities - some patent attorneys have
specialisms.

Eg,
[https://register.epo.org/application?number=EP13189587](https://register.epo.org/application?number=EP13189587)
has BWT as their representative.

If you find the quoted prices too high and your offers of lower amounts are
rebuffed then ask again here stating the offers you were given.

Ultimately you can submit a complete disclosure of your invention and then
mould the actual application later so if you're doing this as a prelude to
seeking funding then that is probably the cheapest way to go. A good patent
attorney is likely to be able to get you a relatively useful patent that is
actually more broad than your actual invention however.

[https://oedci.uspto.gov/OEDCI/](https://oedci.uspto.gov/OEDCI/) might be
useful, it's a USPTO list of those registered to practice with the USPTO, you
can query by state, for example.

If you're after a UK agent feel free to PM me for further info.

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analog31
This is good advice. Prior art can torpedo your application, so it makes sense
to do a cursory search on your own nickel before paying a lawyer. My patent
lawyers have always advised me to do my own searches.

I'm not a lawyer, but it's been my experience that if your invention combines
A and B, and the examiner can find A and B in separate patents, then you're
pretty much cooked. If you find both A and B in a single patent, then you'd
better hope the patent is expired. If you find prior art, then your options
are to give up or narrow your claims. That can be a gut wrenching, if you're
already in the hole to a lawyer when you have to make this decision. At best,
narrowing your claims still lets you protect the important elements of your
invention.

If you find a "close" patent, then following its citations, and the patents
that cite it, is a good way to chase down more possible prior art.

Now, I've found that it's touch and go whether the examiner will look outside
the patent literature. As it gets easier and easier to search for anything
that's been written about anything, fertile ground for finding prior art will
of course expand. It could include the academic literature, so if you're a
student, you might be able to get some (free) help from your friendly
neighborhood reference librarian.

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clairity
yes, $1-2k can get a lawyer to help you write a provisional but writing the
full patent tends to be more like $5-10k, and that's assuming you do most of
the work. a provisional gives you 1 year to write the full patent but at least
starts the clock on first-to-file.

if you've formed a business entity around the patentable idea, a law firm may
be willing to defer their compensation (if you pitch them).

but you only want to patent something if you think you can defend that patent
in the future. otherwise it's an expensive paper trophy.

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thegrif
I've recently gone through the patent process and had the benefit of working
with one of the most prestigious IP firms in New York. I'd be happy to share
the process we went through, the instructions I was given, etc...

LinkedIn is in my profile. Reach out and include your email or IM - glad to
help :)

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mrjaeger
Might want to check out
[https://www.upcounsel.com/](https://www.upcounsel.com/), couple of friends
used them for the startup incorporation process and said they loved them. Not
sure if they deal with patent law but could be worth checking out.

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enilsen16
[http://www.avvo.com](http://www.avvo.com) would be another great option. I
have a few friends that work there, really cool office-space.

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joshmlewis
I haven't specifically dealt with patent lawyers before but most decent
lawyers will give you a free consult just to go over the main points and give
basic feedback. From there you can infer how much it will cost to go forward
and what the process would look like.

