Inventing stuff is fun, and from my perspective, working with inventors is just as great. The practice of intellectual property law has been my favorite over the years because the clients are typically happy. Usually no one is fighting over anything in court, inventors are stoked to see their brainchild come to life, and everyone is excited about the impact this new innovation will have on the world.
All of this excitement can come to a bit of a halt when it comes time to get lawyers and the government involved.
The United States Patent and Trademark Office (USPTO) is the government agency tasked with issuing patents in the United States, and getting through the entire process requires time (usually multiple years), money (a lot of it), and patience (as in, have the patience of Job).
Lawyers are hard to choose, and it can take months or longer to draft a patent application. Then, after your patent application is filed, the USPTO’s process (called patent “prosecution”) takes about 1-2 years, or more, to get through. THEN, there are staggered fees you have to pay for the next 20-ish years after finishing prosecution.This makes picking a lawyer pretty important–you’ll be stuck with them for a while.
🔈🔈Warning🔈🔈: I try not to be a doom and gloom type of messenger, but the reality is that finding a good patent attorney or agent for your invention is tough. It can be even tougher if you’re a woman.
SHORT EXPLAINER: To represent an inventor at the USPTO, a patent agent or patent attorney must take and pass a special exam and have certain qualifications.
Patent agents are people with science/engineering/technical degrees but no law degree. Patent attorneys have both a science/engineering/technical degree plus a law degree.
Both patent agents and patent attorneys can represent patent applicants in the USPTO. The USPTO keeps comprehensive records of this group because of the special exam all parties have to take.
Even once you find a good patent attorney or agent (woman or man), women inventors have a significantly harder time getting patents issued through the patent office. In fact, only 4% of patents issued by the USPTO in the last ten years have women-only inventors (the numbers go up a little bit if a man is also named as an inventor).
And, if you’re looking for a female patent attorney, only about 25% of all registered patent attorneys and agents are women, so you may have to dig deep to find us (and let’s not get started on intersectionality).
If you need more proof on these challenges, check out the below talk by Sara Blakely, the now-billionaire founder of Spanx. Sara recounts her experience trying to first find a woman patent attorney, and then any patent attorney, who could help her get her first Spanx patent.
She couldn’t find a woman patent attorney because at the time there were literally none in her state. All of the men thought her invention was terrible. And, when she did find some firms to interview about helping her patent her invention, they wanted basically her entire life savings to get the application filed.Because of these harsh facts, it is sooooo important that you hire a lawyer you trust and clearly understand.
I hope this article helps you, my inventor sistren, make good, grounded decisions when you’re searching for a patent lawyer.
There’s no way I can cover everything here, but here are four major considerations if you’re searching for a patent lawyer.
|1. Avoid being scammed|
|2. Explore legitimate low-cost options|
|3. If you can afford it, hire someone|
|4. Educate yourself about the process|
On to the details:
1. Avoid being scammed
There are a number of “invention marketer” or “invention promoter” companies out there who may take your money and leave you with little to show for it. The USPTO has published complaints against companies including Davison Design, Invent Company, Invent Help, Harvey Reese Associates, and World Patent Marketing.
Here are the USPTO warning signs to look for if you get wrangled into a call/discussion that seems sketchy:
For more, check out the below articles on this topic:
- United States Patent and Trademark Office: Scam Prevention
- Inventors Suing InventHelp Want to Know Why George Foreman Represents the Company
- Revisiting World Patent Marketing: The Multimillion-Dollar Scam Matt Whitaker Was Neck Deep In
- Invention Services: Finding Valuable Services & Avoiding Scams
Please, please don’t get scammed–not only could you lose thousands upon thousands of dollars, you could also lose the rights in your invention completely.
2. Explore legitimate, low-cost options
The baseline fact is that obtaining a patent is EXPENSIVE. You can expect to spend between $8,000 and $10,000 for a quality utility patent application (the most common type). This will probably not include the cost of what is called the “prosecution” phase, which is a time period where your lawyer will go back and forth with the patent office on your application’s details.
Check out the diagrams below on cost estimations for patent applications–both are a little dated but still provide pretty accurate guidelines:
APPLICATION PHASE COSTS
PATENT COST DIAGRAM FOR PATENT APPLICATION + PROSECUTION PHASE
I know these numbers seem incredibly high for a lot of people. $10,000 is a lot of money–most of us don’t just have that kind of cash sitting around. And, if we do, there are many good uses for it!
Because of this, I want to share three low-cost resources with you that will help you get started if you need a little time to get your money together for a full-blown patent application.
- You could file your patent application yourself–there’s nothing in the law to prevent an inventor from doing this. As I’ve written about elsewhere, however, this process is very complex and convoluted. I’d be very, very weary of going at it alone. If you’re going to try, the hands-down best book to guide you through the process is NOLO’s Patent It Yourself. If you watched Sara Blakely’s full remarks, you heard that she ended up buying a book and drafting most of her patent application herself. Even so, she had to hire a lawyer to help finish it and get it across the finish line.
- The USPTO offers two low-cost/free programs to assist inventors. The first is the Law School Clinic Certification Program,which allows more senior law students to work on patent applications under the strict guidance of a licensed patent lawyer. Law schools don’t typically charge for these kinds of services. You may end up paying a few hundred dollars in USPTO filing fees, etc., but that pales in comparison to thousands of dollars in law firm fees. And, law schools may have a larger pool of diverse students/faculty to pull from if that is important to you. The list of participating law schools is ever-changing, but you can find the full USPTO list by clicking here. This is a great opportunity if you’re in the vicinity of one of the participating schools.
- The second low-cost/free USPTO program is the Patent Pro Bono Project, which matches inventors with registered patent agents and attorneys who volunteer their time without charging the inventor. You’ll still have to pay USPTO filing fees, but that is probably a few hundred dollars. You can find out if your state/region has a program at this website. This is also a great option if you’re near a program. My personal observation is that more women volunteer for this kind of thing than men–I don’t have any data or research to back this up though.
USPTO Patent Pro Bono Coverage Map
For more, you might want to watch some of the below USPTO video–it is dry as all get out (they are known for this), but there’s some great information buried in it about low-cost/free options for inventors.
3. If you can afford it, hire someone
I know it may be uncomfortable to fork over thousands of dollars for a patent application that may or may not be approved by the patent office. You have between a 60-70% chance of being granted a patent within three years of filing an application. This is another reason to carefully choose your patent lawyer.
The only thing worse than giving someone $10,000 to file a patent application is giving someone $10,000 to file a patent application that isn’t ultimately approved by the USPTO (or, getting an application approved that isn’t worth the paper its typed on).
This is why I suggest hiring an experienced patent attorney or patent agent if you can afford it.
Keep in mind–it would be helpful in most cases to have a patent lawyer with a background similar to the technology in your invention. For example, if your invention is mechanical engineering-based, a patent lawyer with a mechanical engineering background may be desirable.
This isn’t a flat-out requirement, but it can help. In addition, you can also ask the patent lawyer what kinds of patent applications they’ve successfully prosecuted in the past to see if they have the experience with inventions like yours.
To find a patent lawyer, try the following four suggestions, in addition to your obligatory Google searching:
- If you know any lawyers, ask them to refer you to someone they trust. Word of mouth can often be the best way to find a trustworthy patent lawyer.
- Search your state’s or city’s bar association website for a lawyer directory that lists attorneys by practice. You can also search the websites of bar associations outside of your city/state, because a licensed patent attorney anywhere in the country can help you. Bar associations are professional organizations for licensed attorneys–the easiest way to find them online to do is perform a Google search using [city/state] + bar association. Some states also have special intellectual property law associations.
- Reach out to some of the national intellectual property law associations. While these are primarily trade associations for lawyers, these groups often have public advocacy programs. Here are three national associations you can start with:
- American Bar Association Intellectual Property Law Section
- American Intellectual Property Law Association
- National Bar Association Intellectual Property Section (for predominantly African-American lawyers)
- Search the USPTO’s directory of licensed patent agents and attorneys.
4. Educate YourselfUnderstanding the patent application and patent prosecution phase is hard. The USPTO gives a mandatory exam on these topics to every person who wants to file and prosecute patent applications, and the pass rate hovers around 50% or so. This just goes to show you how tough it is to really understand all the nuances of patent prosecution.
If you’re planning to file a patent application, either on your own or with help, take time to read up on the general process so that you’re not surprised later. You will, at minimum, want to understand the basics of what is patentable, what the application includes, and what the process will look like once the application is filed.
NOLO publishes some of the best resources I’ve seen in terms of clear, step-by-step layperson instructions. If you can’t afford to buy all of them, head over to your local library and check them out!
There are other things I could mention here but this article has jumped waaay over TLDR status. For more, let me know where you are with this. Are you thinking of patenting an invention? Already been through the process? Drop a note in the comments section and let me hear about your experience!
Please give as much information as you can in response to these questions. I’d be happy to share more tools and resources that help you get what you want. And, I know the other folks reading this can learn from your experiences! We are all in this together.
I always say that I’m on a mission to build a nation of good people with dynamic personal brands and successful businesses. We can learn from each other on this journey, particularly when we have accountability partners. This is why I am building a whole nation of them.
You can connect to the the private community I’ve created to provide support and encouragement along the journey–online and via app. Check us out at programs.shontavia.com or via the Mighty Networks App.
Download the Mighty Network app by clicking here. Once it downloads, click “Find a Mighty Network” and search for Shontavia Johnson. You’ll find content there that I may not share elsewhere.
Thank you so much for joining me on this roller coaster of an experience. I am eternally grateful that I get to do this work with wonderful people each day.
Let’s make it happen,
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