Your First Meeting With a Patent Attorney: What to Prepare and What to Expect

The first meeting with a patent attorney is the most important hour in most inventors' IP journey — and the one they are least prepared for. Inventors arrive nervous, overwhelmed by jargon they do not understand, and unsure whether the person across the table is the right one to trust with their invention. Attorneys see an unprepared inventor and either spend the meeting educating them (billing you for a conversation that should have happened before the meeting) or make assumptions about your goals that may not match your actual situation.

Preparation eliminates both problems. This article tells you exactly what to bring, what questions to ask, what answers to expect, and how to evaluate whether this attorney is the right one for your invention.

Before the Meeting

Finding the Right Attorney

If you have not yet identified a patent attorney, see: When to Hire a Patent Attorney and How to Find a Trustworthy Patent Attorney Overseas. For your first consultation, look for:

• A registered patent attorney or agent (not a general practice lawyer — patent prosecution requires specialist registration at the patent office)
• Technical background relevant to your invention (a mechanical engineer for a mechanical invention; a chemist for a chemical formulation)
• Experience with independent inventors (some firms work exclusively with corporations and are not set up for individual inventor engagements)
• A willingness to do an initial consultation at a fixed fee or free of charge (many patent attorneys offer a reduced-fee or complimentary first meeting)

What to Bring

Your written invention description. The document you created in the first 24 hours after conception (see I Have an Invention — What Do I Do First?). This should describe the problem, your solution, the key components or steps, and how your invention differs from existing solutions. The more detailed, the more productive the meeting.

Sketches or drawings. Even rough hand-drawn sketches help the attorney understand the invention faster than verbal description alone. If you have CAD renders, bring them. If you have a physical prototype, bring it — or bring photographs and a video demonstration.

Your prior art search results. If you conducted the initial search recommended in Article 62, bring a list of the most relevant patents and products you found, with a brief note on how your invention differs from each. This saves the attorney time and demonstrates that you have done your homework.

A list of your questions. Write them down before the meeting. You will forget them in the moment if you do not. (This article provides a suggested list below.)

An open mind about cost. Have a general sense of your budget for patent protection — but do not decide on a strategy before hearing the attorney's assessment. The attorney may recommend a different approach than what you expected.

What NOT to bring: A demand for a specific outcome ("I want a patent that covers everything"), a pre-written patent application for the attorney to "just file," or an expectation that the meeting will result in an immediate filing. The first meeting is for assessment and strategy — not for execution.

What the Attorney Will Ask You

Expect the attorney to ask some or all of the following. Prepare your answers in advance:

"What does your invention do?" Describe the problem and the solution in plain language. The attorney needs to understand the functional purpose before the technical details.

"How does it work?" Walk through the mechanism, process, or composition step by step. Use your sketches. This is where the attorney assesses whether the invention is the kind of subject matter that can be patented — and begins thinking about how claims might be structured.

"What is new about it?" This is the most important question. The attorney is asking what distinguishes your invention from everything that already exists. Your answer shapes the entire patent strategy — it determines where the claims will focus.

"Have you searched for existing patents or products?" The attorney wants to know what you already know about the prior art landscape. If you have searched, share your findings. If you have not, say so honestly — the attorney may recommend a professional search before filing.

"Have you disclosed the invention to anyone?" This is a critical question. The attorney needs to know whether any public disclosure has occurred (which may affect patentability in no-grace-period jurisdictions), whether NDAs were in place, and whether any co-inventors exist.

"Where do you want to sell or licence?" The geographic answer determines which jurisdictions to file in. A US-only product needs a US patent. A globally manufactured product needs international coverage. The attorney cannot recommend a filing strategy without knowing your commercial geography.

"What is your budget?" The attorney needs to know your constraints to recommend a realistic strategy. A $5,000 budget means a US provisional and careful planning. A $50,000 budget means a US non-provisional plus PCT with selective national phase entries. A $150,000 budget means a comprehensive international portfolio. All three are valid — but the strategy for each is completely different.

"What is your timeline?" Are you launching a product next month (urgent — file immediately)? Are you still in concept development (less urgent — more time to prepare a strong application)? Are you approaching investors in six months (the patent filing should be complete before investor meetings)?

What to Ask the Attorney

About the Invention

"Based on what I have described, do you think this is patentable?" This is a preliminary assessment, not a guarantee. But an experienced attorney can usually give you a directional answer — "this looks promising," "this may be difficult because of [specific concern]," or "I would need to see the results of a professional prior art search before advising."

"What type of patent protection would you recommend?" Utility patent, utility model, design patent, or a combination? In which jurisdictions? The answer should be specific to your invention and your commercial goals — not a generic recommendation.

"What are the main prior art risks you see?" An attorney with relevant technical experience may immediately recognise prior art challenges based on their knowledge of the field. This early warning is valuable — it can change the claim strategy or even the decision to file.

About the Process

"What is your recommended filing strategy and timeline?" Provisional first, then PCT? Direct filing in specific countries? Utility model in China alongside the US application? The answer should be a specific plan, not a vague assurance.

"How long will prosecution take, and what should I expect?" The attorney should give you realistic timelines for examination, Office Actions, and grant — not optimistic projections that set false expectations.

"What is the total estimated cost through grant?" Not just the filing fee — the total cost including attorney fees for drafting, filing, responding to Office Actions, and grant. Ask for a breakdown by phase. A transparent attorney provides this without hesitation.

About the Attorney

"How many patents have you prosecuted in my technology area?" Technology-area experience matters. An electrical engineer prosecuting a chemical patent (or vice versa) may miss technical nuances that affect claim scope.

"What is your approach to claim drafting — broad or conservative?" Some attorneys default to narrow, safe claims that are easy to get allowed. Others push for the broadest defensible claims, expecting Office Actions and engaging in prosecution to maximise scope. Neither approach is wrong — but you should understand which you are getting.

"Who will actually do the work on my case?" At larger firms, the senior partner in the meeting may hand the work to a junior associate. Ask who will draft the claims, who will respond to Office Actions, and who you will communicate with day-to-day.

"How do you communicate with clients?" Email? Phone? Portal? How often will you receive updates? Will you be notified immediately when an Office Action is received, or will you learn about it when the response deadline is approaching?

What the Meeting Should Produce

By the end of a productive first meeting, you should have:

1. A preliminary patentability assessment. Not a definitive opinion — but a directional view on whether the invention appears patentable and what the main challenges might be.

2. A recommended strategy. What to file, where, and in what sequence. Whether a provisional is appropriate or whether a direct non-provisional filing is better. Whether international protection is warranted and through what mechanism (PCT, Paris Convention, or direct national filings).

3. A cost estimate. A written estimate (or at least a verbal range) for each phase: prior art search, provisional filing, non-provisional filing, and prosecution. Ask for the estimate in writing after the meeting if it was not provided during.

4. A timeline. When the attorney can begin, how long drafting will take, and when you can expect the application to be filed.

5. A gut feeling. Did the attorney listen to you? Did they ask thoughtful questions? Did they explain things clearly without being condescending? Did they seem genuinely interested in your invention, or were they going through a checklist? Trust your instinct — this is a relationship that may last years.

Red Flags

The attorney guarantees a patent will be granted. No attorney can guarantee this. Examination outcomes depend on the examiner, the prior art, and prosecution — none of which can be predicted with certainty. A guarantee is either a lie or a sign of inexperience.

The attorney pressures you to file immediately without a search. Unless there is genuine competitive urgency, a responsible attorney recommends at least a preliminary prior art search before committing to filing. Filing blind risks wasting prosecution costs on an application that will be rejected on known prior art.

The attorney quotes a suspiciously low price. Patent prosecution is a skilled professional service. A US non-provisional filing quoted at $3,000 (when the market rate is $8,000–$15,000) means either the attorney is cutting corners on claim drafting, is extremely junior, or is planning to bill extensively during prosecution. Ask what the quote includes and what it does not.

The attorney does not ask about your commercial goals. A patent strategy that does not account for where you plan to sell, whether you plan to license, and what your budget constraints are is a strategy built in a vacuum. An attorney who drafts claims without understanding the commercial context is doing legal work, not strategic work.

The attorney cannot explain things in plain language. If the attorney speaks exclusively in legal jargon and cannot explain concepts in terms you understand, communication problems will worsen during prosecution — not improve.

After the Meeting

Compare. If you are evaluating multiple attorneys, compare their assessments, their proposed strategies, their fee estimates, and your personal comfort level. It is entirely appropriate to consult two or three attorneys before choosing one.

Follow up. If the attorney impressed you, send a brief follow-up email thanking them and confirming the next step (prior art search, provisional drafting, or whatever was agreed). Clear, prompt communication from you sets the tone for the relationship.

Set your budget. Based on the attorney's estimate, decide how much you are prepared to invest in the first phase (typically a prior art search and provisional filing). Commit that budget before proceeding — uncertainty about funding creates delays that can cost priority dates.

Sources

1. USPTO - Using Legal Services — Guidance on working with patent attorneys and agents, including what to expect
2. USPTO - Patent Pro Bono Program — Free legal assistance for qualifying inventors who cannot afford patent counsel
3. EPO - Find a Patent Attorney — Resources for locating qualified European patent attorneys
4. WIPO - IP Services — WIPO services including patent information, search tools, and IP counselling