Key Takeaways

  • Knowing how to interview a patent attorney ensures you choose someone with the right technical and legal expertise.
  • Ask specific questions about their USPTO registration, litigation history, industry experience, and international patent capabilities.
  • General questions about firm reputation, billing practices, and conflict of interest remain important.
  • Practical considerations include budgeting for legal services, understanding confidentiality protections, and building a collaborative relationship.
  • Preparing in advance with invention documentation and clear expectations helps you make the most of the interview.

Looking for questions to ask a patent attorney? You know you need to hire a lawyer, but you may be wondering how to choose the right one. No exclusive list of questions exists. However, you should ask specific questions, which you would before engaging an attorney, and then ask other questions that are particular to patent attorneys. Being prepared and doing your due diligence when interviewing attorneys will help you not only understand the process but will also help you develop a professional relationship with a future legal professional.

Questions Particular to Patent Attorneys

  • Do you have technical experience or technical background, such as software, life science, or mechanical engineering?
  • Who is your typical client? Do you represent small and large businesses? Do you work with start-ups? Do you work with individual inventors?
  • Are you board certified in intellectual property by your state bar?
  • Do you provide extranet or portal access to my case, such as billing, documents, and deadlines?
  • Have any of your patent or trademark applications been subject to litigation?
  • Do you practice internationally (e.g., do you help protect patents in other countries)?
  • Are you registered with the U.S. Patent & Trademark Office?
  • Do you offer services in obtaining patent prosecution (e.g., securing patent rights for inventions) and patent litigation (e.g., handling potential infringement of a patent through litigation)?
  • What are the benefits and risks of filing for a patent?

To get more ideas for questions, research what a patent lawyer does.

Evaluating Technical and Industry Experience

When asking questions particular to patent attorneys, go deeper into their technical background. A strong patent attorney not only understands the law but also grasps the science or engineering behind your invention. Ask:

  • Have you handled patents in my specific industry or technology field?
  • What percentage of your clients are individual inventors versus corporations?
  • Can you explain past successes with inventions similar to mine?

This helps you assess whether the attorney can anticipate industry-specific challenges, craft stronger claims, and foresee possible rejections.

Questions to Ask in General

  • Is your firm highly rated, such as receiving an AV-Rating with Martindale-Hubble?
  • Do you have any teaching or seminar experience?
  • How do you provide value to your clients? For example, this may include expertise, communication, and billing structures.
  • Do you have a conflict of interest in taking my case?

Billing, Timelines, and Communication

General questions should cover not only qualifications but also the business side of working together. Consider asking:

  • What are your billing rates, and do you offer flat-fee structures for filing?
  • How long will the patent application process take, and how do you keep clients informed about progress?
  • Who will actually handle my case—will it be you, an associate, or a team?

Clear answers to these questions set realistic expectations, avoid surprises, and help you compare attorneys more effectively.

Some Things to Consider When Interviewing Patent Attorneys

  • A confidentiality agreement is not needed. Federal law requires that patent attorneys and agents keep all information and material related to clients' (or prospective clients') inventions confidential. These federal requirements are more stringent than a confidentiality agreement would be.
  • Keep in mind that the patent attorney is there to help you. Communicating about your invention to the attorney will help them advise and represent you. You know your invention best. Help your attorney understand what you know through explanations, line drawings, or photography.
  • Be sure to budget your legal expenses. You are hiring a patent attorney as an experienced, professional service. Talk to the patent attorney about how they charge. Most patent attorneys do not charge on a contingency basis. You may be tempted to ask for a bulk discount (if you have several inventions) or if your attorney wants to go in on your project as a partner. Be careful here. Although fees can be structured for large amounts of work, large amounts of work must exist. Additionally, proposing that the attorney join you as a business partner is probably going to end in a short meeting.
  • Talk to several lawyers. Compare services, expertise, and billing. Don't just shop for the lowest price. Most experienced patent attorneys understand the general scope of projects or processes. By knowing this, they can often give you an idea of their costs associated with your project.
  • Be realistic. Understand that you are thinking about hiring a patent attorney so that you don't have to complete this process yourself. Understand the process with your attorney. Have realistic expectations for your invention.

Patent law is complicated, so complete your due diligence when talking to a patent attorney. If you want to protect your inventions, whether it's through obtaining patent rights or defending against a possible infringement, you want a long-term relationship with a skilled professional. Asking the right questions will help you in this due diligence while also helping you to create a solid professional relationship.

How to Prepare Before the Interview

Knowing how to interview a patent attorney also means preparing yourself. Attorneys will be more effective if you come with organized materials and clear goals. Before the interview:

  • Prepare a summary of your invention, including diagrams, prototypes, or technical notes.
  • Gather information on any existing prior art or competing products.
  • Write down specific concerns—such as international protection, licensing, or enforcement.
  • Think through your budget and business goals so the attorney can provide tailored advice.

Being prepared not only makes the interview more productive but also shows the attorney that you are serious about protecting your intellectual property.

Frequently Asked Questions

  1. How do I prepare to interview a patent attorney?
    Bring detailed notes on your invention, any prior searches you’ve done, and clear goals for what you hope to achieve.
  2. What should I ask about patent attorney fees?
    Ask if they bill hourly, offer flat fees, or provide estimates for filing and prosecution costs. Transparency in billing is key.
  3. Is it important that my attorney has technical expertise in my field?
    Yes. A patent attorney with relevant technical knowledge will better understand your invention and craft stronger claims.
  4. Should I interview more than one patent attorney?
    Absolutely. Speaking with multiple attorneys allows you to compare approaches, expertise, and costs before making a decision.
  5. Do I need a confidentiality agreement before the interview?
    No. Patent attorneys are bound by strict federal confidentiality rules that are stronger than most NDAs.

If you need help with how to interview a patent attorney, you can post your legal need on UpCounsel's marketplace to find a competent attorney to assist you. UpCounsel only accepts 5 percent of the attorneys who apply to the platform, so you can be assured that your business and your invention will receive top-tier legal help from professionals from the country's best law schools.