Rahway, NJ asked in Patents (Intellectual Property) for New Jersey

Q: I am in the process of creating a model for open heart surgery. Where do I start if I want to patent? What lawyer?

2 Lawyer Answers
Kevin E. Flynn
PREMIUM
Kevin E. Flynn
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: Choosing the right patent attorney is an important decision. There are a few things to consider. First, the patent attorney needs to have the right sort of technical background to be able to learn and communicate your idea. For example, I stay clear of pharmaceutical patents or block chain inventions as I am not competent to negotiate claims with an examiner with considerable experience in those spaced.

I focus on medical devices and surgical methods but also do other innovations where an engineer made a tangible thing better.

A second factor is whether the attorney prefers to work with very large companies and universities versus is open to working with newly formed companies and even individual inventors. Many patent attorneys like being a focused sub-contractor with a very defined role that interacts with a patent attorney working in-house for a large company or a university.

I enjoy working with companies to get their first patents and to stay clear of others but that means that I need to take time to explain things to a non-patent attorney. I like it but many folks do not.

On the good news side, you can pick an attorney from your own state or from any other state as the process of getting a patent is covered by a federal license ("registration").

A final filter is that a patent attorney cannot take on your work if that patent attorney is already working with a client in that space. Thus, your first contact should start out just listing the general area such as open heart surgery and not share any details until the patent attorney confirms that the patent attorney does not have a conflict talking with you.

It can be a good idea to get input from your existing lawyers as those lawyers have a network of attorneys that they know and can help steer you to someone with a good reputation.

I hope that this helps.

Kevin E Flynn

Leonard R. Boyer
Leonard R. Boyer
Answered
  • Clifton, NJ
  • Licensed in New Jersey

A: You need a patent attorney who has the under graduate degree in the appropriate area, so that you have the right patent and interim patents until the final one is granted. You also need an attorney who will set up the correct corporate entities. So with both attorneys, your future business cannot be at risk. It is very important to have an attorney custom draft the correct corporate documents. You should act fast so no one else patients your idea before you do.

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