#50 PATENT LAWYERS Buyer Checklist You Need To Know Before You Spend Your Money. 60 Buyer-Beware Intelligence Points.

Legal Information Notice: This checklist provides general educational information only. It is not legal advice, does not create an attorney-client relationship, and may not apply to your jurisdiction or circumstances. Laws and deadlines vary. Do not rely on this checklist for a specific legal decision or deadline; consult a qualified attorney licensed in the relevant jurisdiction.

  1. A patent application does not guarantee a patent.
  2. Patent prosecution can take substantial time.
  3. Patent costs extend beyond the initial filing.
  4. Government fees are only one part of the total cost.
  5. Attorney/agent fees can be substantial.
  6. Search quality matters.
  7. Prior art matters.
  8. Claim drafting matters.
  9. Broad claims are not automatically better if they cannot survive examination.
  10. Narrow claims may provide less commercial protection.
  11. Technical understanding matters.
  12. Different inventions may require different patent strategies.
  13. A provisional application is not itself a granted patent.
  14. A later nonprovisional application must meet requirements to benefit from a provisional filing date.
  15. Filing, search, examination and other USPTO fees can apply.
  16. Additional fees can arise depending on the application and claims.
  17. Maintenance fees can be required after a patent is granted for applicable patents.
  18. International protection involves additional systems and costs.
  19. Patent protection is jurisdiction-specific.
  20. A patent does not automatically mean the owner is free to practice the invention without other legal constraints.
  21. Patentability and commercial value are different questions.
  22. Enforcement can be extraordinarily expensive.
  23. A registered patent can still be commercially weak.
  24. Invention-promotion companies making unrealistic promises deserve scrutiny.
  25. The most important question is “What protection am I actually obtaining for the money I am spending?”

The USPTO explicitly notes that patent fees are required for examination but do not guarantee that a patent will be granted.

B. PREMIUM BUYER CHECKLIST

INVENTION

☐ Identify the invention
☐ Identify inventors
☐ Document development history
☐ Preserve technical documentation
☐ Identify improvements
☐ Identify commercial application

PRIOR ART

☐ Patent search
☐ Non-patent literature search
☐ Competitive products
☐ Existing patents
☐ Existing applications
☐ Public disclosures

The USPTO recommends searching for similar inventions before applying because publicly available inventions can affect patentability.

PRACTITIONER

☐ Registered patent attorney/agent verified
☐ Technical background relevant
☐ Patent prosecution experience
☐ Experience with similar inventions
☐ References/track record reviewed
☐ Scope of engagement defined

The USPTO maintains a register of patent attorneys and agents, and distinguishes the roles of patent attorneys and patent agents.

FEES

☐ Initial consultation
☐ Search
☐ Drafting
☐ Filing
☐ Government fees
☐ Office-action responses
☐ Amendments
☐ Continuations where applicable
☐ Issue fees
☐ Maintenance fees
☐ International filings
☐ Translation

COMMERCIAL VALUE

☐ Target market
☐ Competitors
☐ Licensing potential
☐ Manufacturing economics
☐ Enforcement economics
☐ Expected revenue
☐ Strategic value

FINAL DECISION

Compare:

TOTAL PATENT COST

against

EXPECTED COMMERCIAL VALUE

and separately assess:

COST OF NOT PROTECTING THE INVENTION

FINAL QUESTION

If I spend the money to obtain the patent, what specific commercial advantage do I expect it to create?

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