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Apr 26

A few weeks ago someone commented on one of my blogs.  I was about to reply, indicating that I strongly disagreed, but instead I decided to wait, to think about my reaction, and to ask some of my seasoned inventor friends (and a few patent attorneys) before responding.  After considerable deliberation, I decided it was important enough to write a new blog about the subject of the comment.   

Here is the comment that was sent to me:  “A decent patent attorney should be able to see if a product is marketable and profitable and he should be able to offer advice on this. If he simply writes claims to collect your cash then you need to work with a different attorney and not use him again”.

In my opinion (and the opinion of everyone I polled) not only is the advice in the first sentence of this comment wrong, it is completely WRONG!   Most decent patent attorneys wouldn’t presume to offer you marketing advice; and, if they do, in most cases you’d be best advised to find another attorney.  Patents attorneys go to school first to study some type of science or mathematics-related course, and, then subsequently, an education in the law with, where possible, a specialty in patent law.  For most attorneys, nowhere along the way are they taught about marketing.  In fact, most attorneys are not good at marketing even their own business, let alone yours.  When I told my seasoned inventor friends (and patent attorneys) about the comments, they were all amused by the naivety of the writer. 

Marketing is an illusive concept.  The first part is market research.  Do you have a market?  What are the demographics pertaining to your product?  What industries and markets do you need to be concerned with or target?  Why would you want to pay an attorney his/her hourly rate to do this research?  If you need to hire someone to do this for you, hire someone who’s knowledgeable and who knows how to obtain the necessary information.

Next, there is the actual marketing/selling part of the invention.  How are you going to make your target market aware of your new product?  This is way out of most attorneys’ area of expertise. 

It is NOT your attorney’s job to tell you if you have a good idea.  It is your responsibility to make this determination with the help or others. 

I do agree with the last part of the statement about when to find another attorney.  A good attorney should ask you whether or not you’ve had a professional search done (you shouldn’t have an attorney do your patent search for you, either), who your engineer is, and whether or not you’ve established that you can make the invention at a price that the consumer is willing to pay.  If you don’t have this information yet, talking to the patent attorney at all, is premature.

You should expect to hire a variety of experts to help you.  Your attorney is only one of these experts.  If you are looking for a “general practitioner” who can do everything, you are setting yourself up for lots of disappointment and as well as buckets of wasted time and money.