Researching and hiring a patent attorney for assistance with filing a patent application can be stressful and confusing. There are a few questions that every independent inventor or small business owner should ask before signing the engagement letter. Here are my top five questions every inventor should ask before hiring a patent attorney.
 
Question 1: Are you a USPTO registered Patent Attorney? 
Patent attorneys must pass a separate test to allow them to practice before the United States Patent and Trademark Office (“USPTO”). Often referred to as the “Patent Bar”, this test focuses on the rules employed by the USPTO to prosecute patent applications (the term “prosecuting” refers to the process of filing the patent application and then arguing over any rejections until allowance). While there is no science component of the Patent Bar all applicants are required to prove they have a sufficient “hard science” background, which generally translates to an undergraduate degree in a science or enough relevant undergraduate credits to approximate a science minor. You can also check for registered patent attorneys on the USPTO official website (www.uspto.gov, search for “registered attorney”).
 
Question 2: Does the Patent Attorney’s hard science background cover my invention?
Depending on the invention this question will be more or less relevant. If the invention is a relatively simple mechanical or method of business invention, most patent attorney will be able to competently handle the drafting and prosecuting. However, if the invention is highly complex, such as organic chemistry or advanced microchip technology you should seek out a patent attorney with the relevant background. This does not mean that you need a PhD in computer engineering to prosecute a patent application related to computers or software, but a patent attorney with a computer engineering background will likely be a better fit than a geologist.
 
Question 3: Can you prepare and file my patent application in the needed time?
This is really a two-part question; the first part is: “what is my deadline for filing the patent application?” (see my previous post Five Early Steps to Patent Your Invention); and the second part is: “does the patent attorney have the necessary time to file the application?” As discussed in my prior post, offers for sale or publications disclosing the invention prior to filing your patent application can trigger a 12-month deadline for filing. This becomes increasing complicated if you intend to file for foreign patent protection. Know when you need to get your application on file and confirm with your patent attorney that he or she has the necessary free time to competently draft and file the application. Additionally, make sure you have the time to work with the patent attorney, remember it is your invention, the patent attorney will help you craft and adequately claim the invention, but they will need your input on how it works and the best ways to make and/or use the invention.
 
Question 4: How does the Patent Attorney charge?
This question generally comes down to hourly versus flat rate. If the patent attorney is offering an hourly rate, which historically is the standard in the legal industry, they should be able to provide an estimate for filing costs, but know that estimates are always best guesses, and unless specifically stated are not capped. Flat rates offer more certainty in the final costs for filing the application, but they must be negotiated with an understanding of the complexity of the invention and the detail that will be needed in the application. Moreover, almost all patent attorneys, whether charging hourly or flat rates, will separate the filing and the prosecution costs. This is often necessary because prosecution time lines can vary drastically from a first office action allowance to multiple rounds of final rejections, and possibly appeals within the USPTO (and even outside to Federal Court). The patent attorney’s engagement letter should detail the steps and costs at each step, and you should discuss these upfront to have a better understanding of the process.    
 
Question 5: How much does the Patent Attorney charge? Most patent attorneys fall within a few general ranges. The average application will likely require at least 40 hours of billable work (this is highly variable in view of the complexity of the invention, some could require less work, some require hundreds of hours). “Big Law” patent prosecutors generally charge hourly rates ranging from $500-$1000+/hour. These attorneys are usually working for companies generating millions (or billions) of dollars of revenue a year and can afford these rates ($20,000-$40,000 for a small non-complicated application). Boutique firms and solo practitioners offer lower hourly rates and sometimes flat rate pricing. Assuming hourly rates of $200-$600, a relatively simple application can still cost $8,000-$24,000 to file. Flat rates will likely be in this same range, but you will have the peace of mind that additional costs will not be incurred without prior agreement between the parties. These are all estimates based on the degree of complexity and length of the application, actual costs will vary based on the invention. Additionally, keep in mind that these rates do not include prosecution costs, which can be higher than the filing costs if there are multiple rounds of rejection. Further, none of these costs include the USPTO fees for filing the application, continued prosecution fees, grant fees or post grant fees, (viewable on the USPTO website at www.uspto.gov (search for “fee schedule”)), which should be separately detailed in your engagement letter. You should have a firm understanding of what you are paying for and how much you are being charged.
 
Patenting an invention can be an expensive process, often occurring early in the business lifecycle when revenues may be at their lowest. But a properly drafted and prosecuted patent application is critical to protecting your invention. An improperly drafted and poorly claimed patent may not be worth the paper it’s written on (and almost certainly not worth the costs spent to file and prosecute it). Finding the right patent attorney to draft and prosecute your patent application will greatly improve the quality of your application and allow you to have the most confidence that the work is being done competently and at a reasonable price.
An experienced patent attorney can help you navigate the many legal, practical and business considerations related to patenting your invention. If you have any questions about the patent process please contact me at [email protected] or visit my website at www.chiaraiplaw.com

There are many ways of gauging the strength and influence of a trademark. If you talk to a marketer or advertiser they may tell you it is how well-known the mark is or how long the trademark has been in use. But if you speak with trademark professionals or U.S. Patent and Trademark Office (USPTO) examining attorneys (individuals who often decide if your trademark will register or not) they will measure the strength of a trademark based on its distinctiveness. Distinctiveness is the ability of the mark to identify and distinguish the goods or services to which the trademark is attached from goods or services of other providers. While it may seem counterintuitive, the less inherent connection to the goods or services, the stronger the trademark. The five categories of trademarks, from strongest to weakest, are Fanciful, Arbitrary, Suggestive, Descriptive, and finally, generic (words which actually cannot be trademarked, more below).
 
Fanciful trademarks are words that have no original meaning in any language. These are made up or coined words created to be used as trademarks. XEROX and KODAK are two well-known examples. Today these marks are considered famous (a topic for another discussion) because of their long use and intimate association with their respective products, but when these marks were first developed they had no inherent meaning. Overtime the respective brands built up the connection between these marks and their goods and services. Fanciful trademarks are granted the largest scope of protection from third-party encroachment and can be relatively easy to register.
 
The next strongest category of trademarks is referred to as Arbitrary marks. These marks use commonly known words, but the words themselves have no connection to the specific goods or services they are used on. Famous examples are APPLE for computers and AMAZON for online services. The marks have an inherent meaning, but that meaning does not have any natural connection to the goods and services. Again, the brand company must build up the connection between the trademark and the goods and services. Arbitrary trademarks are considered very strong, generally have very broad protection, and are relatively easy to register.
 
Suggestive marks are words that imply an indirect meaning that might not be readily grasped from their ordinary meaning. These trademarks require some thought to make the connection between the mark and the goods and services. Great examples of Suggestive trademarks are GREYHOUND for bus services (greyhound dogs are fast implying that the bus will get you where you need to be quickly), and COPPERTONE for suntan lotions (copper-tone being a skin color associated with tanning). Suggestive marks offer a hint about the connection between the trademark and the good and services, and therefore still require an effort from the brand company to make the association understood to the public. These trademarks are granted a lesser breadth of scope than Fanciful and Arbitrary marks, but are still stronger and much easier to trademark than Descriptive marks.
 
With the exception of generic words, which cannot be trademarked (more below), Descriptive marks are the weakest of protectable and registrable trademarks. Descriptive trademarks directly describe a quality, characteristic or feature of the goods and services. Hypothetical examples include HOT AND STRONG for coffee, BOB’s DINER for a restaurant, or SWEET FLAVORED for candy. Without an actual and demonstrable connection in the public’s mind between the goods and services and the mark as a single source identifier over multiple years (also known as secondary meaning), these types of trademarks usually cannot be registered with the USPTO. When Descriptive trademarks obtain secondary meaning overtime they can be registered, e.g. HOLIDAY INN for hotel services, but are generally provided very narrow protection.
 
The last category relates to words that actually cannot be trademarks. These are generic words for the actual goods or services. Examples include “car” for an automobile or “book” for a printed publication with a front and back cover. Generic words can never be given trademark status and are not protectable under trademark law. The reasoning for excluding protection for generic words is that a brand company should not be allowed to obtain exclusive use of the common term that all manufactures or sellers would use for a product.
 
From a practical view point, Fanciful, Arbitrary and Suggestive marks are considered “inherently distinctive” and can obtain protection after their first use in commerce. However, Descriptive marks must show evidence that the consuming public understands that the mark and the goods or services are derived from a single source (secondary meaning) to obtain registration. The burden of providing evidence for a Descriptive mark often renders them impractical without years of prior use.
 
Choosing the right trademark and properly protecting it are critical steps in business development. An experienced trademark attorney can help you navigate the many legal, practical and business considerations related to trademark registration. If you have any questions about the strength of a mark and would like to discuss trademark protection and registration please contact me at nchiara@chiaraiplaw. or visit my website at www.chiaraiplaw.com