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How to talk to your attorney for fun and profit

A while ago, the Australian Patent Office (IP Australia) released a couple of really useful documents aimed at people who weren't patent professionals - those who are actually paying money to go through the patenting process, and who might reasonably ask themselves what they are getting fro those non-negligible costs. These documents are Australia-focussed, but much if not all of the information is also relevant in the UK or, really, any other country. They are well worth a read.

The first was a 'guide to applying for your patent' This document provides a very brief set of guidelines to the patent process, with section headings such as 'Can I patent my invention?', 'Should I patent my invention?', and so on.

It's extremely useful as an overview of the process and as a list of things to think about, from the perspective of an applicant or inventor who may not be overly familiar with the process, the terminology, and the requirements for getting through the process with at least some measure of success.

However, I did smile rather wryly at the contrast between the advice printed in big bold letters on the first main page of text ('Seek Professional Advice' - essentially, 'Here be dragons. Unwary adventurers should not proceed without an experienced guide on pain of a painfully fiery death'), and the example complete specification presented later on in the document ('....and this is how you can write it yourself, if you don't want to pay those expensive attorney fees!'). For the record, my porfessional advice in relation to 'writing it yourself': Don't. I mean, I would say that, wouldn't I. But seriously, you have absolutely no idea how many ways you can irretrievably mess it up for yourself.

The second documEngaging an attorney toolkient is an online-only set of pages which has the title: 'Engaging an attorney toolkit'

This is an excellent resource for those who have already given it some thought, and who are serious about the patent process, but who are also new and inexperienced, and who have also taken the advice provided in the first document seriously (seek professional guidance).

Of particular note are the sections that ask the applicant to actually think about how a patent might fit in with their business strategy ('a patent should fit with your business plan' ), and those that provide guidelines on how to talk to a patent attorney, what they might ask you for, and what they might need ('What to expect from your first meeting with your attorney', 'what to bring to a meeting with your patent attorney', and 'preparing to see your attorney').

I don't have a lot to say in relation to these, except that as a concept or idea, they are extremely useful. Some of them are a little bit 'skeleton', and could possibly do with more information rather than just bare bones, but as a toolkit this is, at the very least, an excellent starting point. Just asking the questions and putting up the headings is an excellent starting point.

I spend an awful lot of time gently explaining how filing a patent will not make you an instant millionaire, and how your attorney doesn't run your business for you, or make a profit for you.

I also spend an awful lot of time explaining to potential clients and applicants how the patent system works, what is required in terms of information that should go in a patent application, and what the consequences of their actions (or, often more importantly, inactions) are likely to be. And I also spend an awful lot of time essentially saying things along the lines of 'no, actually, that's not quite what I meant when I said that. And 'because we said so' is not an adequate argument for meeting this particular patent requirement.'

All of this is time that is not exactly wasted, but which could potentially more usefully be spent talking about why they used [item X] in preference to [fastener Y], or similar technical detail rather than procedural detail.

So anything that cuts down on that procedural explanation part of the process is only to be applauded as extremely useful.

If you're thinking about patenting, then check them out. And then contact me at for more information.

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