Disclaimer: all my comments below pertain to prospective clients generally, and not to any specific client.
1. do you ask what it is over the phone;
Not right away. I typically don't get there until they want an estimate. Then, I have to have some idea of the complexity and my specific familiarity with the technology. First, they typically want to know about how a patent is acquired, so I focus on process. Sometimes I get into what patents are good for and the types of reasons people get them -- to help the person decide if a patent is really a good idea for their particular circumstance.
I sometimes ask about the general nature of the invention (sort of a general category of technology) for conflicts checks.
2. do you tell them immediately if you dont think it is patentable;
Well, I usually don't say it's not patentable. There's usually some chance that something they have is patentable. However, if I perceive it to be an uphill battle, I say so. I say that they should expect extra costs -- not only in filing but all along the way. I also say that the chances for success are slim. Then, they have to weigh the costs vs. the benefits (discounted by the low likelihood of success) and make the decision as to whether to proceed. I sometimes also discuss some ways some clients can proceed without a patent.
3. do you tell them that they need more than an idea;
Yes and no. I don't agree with the old adage that than a mere idea is not patentable. Of course it is. However, the idea has to be flushed out with enough implementation detail so as to be enabling. So, I don't say that an idea alone is insufficient for patenting. If they just don't know how to make or use their own invention, I tell them they have some homework to do before I can help them.
I do, however, often explain that a patent alone is usually insufficient to capitalize on a clever idea, and I explain why.
4. do you tell them they need to come in for a meeting;
Almost never. I've received cold calls from prospective clients as far away as Singapore, and I've become accustomed to representing people I've never met face-to-face.
4. etc.
I mean to ask this question in a practical setting. I dont want to give away advice for free (especially if it could be wrong), but I dont want to waste everyone's time as well. The question is especially intended to ask about situations in which the attorney or agent does not know too much about the potential invention initially, such that they cant immediately say "oh that is obvious" or "that is already out there". How are these cases handled such that the attorney is not wasting people's time and effort, but at the same time not wasting his own (real or potential) money?
The closest I get to saying "that is already out there" is usually "I'm aware of this similar thing. How is your invention different?" I may continue, "The examiner is likely to argue that such a difference would be obvious because of this, that, and the other. What do you think might be our best response?" Sometimes, I'll have prior art covering the basic idea, but their implementation is unique. That can be patentable but with limited value -- they'll have to compete with the prior art implementations.
On occasion, a client will want (and in fact demand) a patent covering something clearly shown in the prior art. That's when I'll say, "Sorry, you can't have that."
I hope that helps.
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Topic: Dealing with New & Potential Clients (Read 802 times)
