Working with a Patent Attorney — What to Expect

If you have never filed a patent before, the process can seem opaque. What happens during an initial consultation? How does the attorney turn your invention into a patent application? What should you prepare, and how long does everything take?

This guide walks you through the entire experience of working with a patent attorney, from your first phone call to a granted patent. The goal is to eliminate surprises so you can focus on what matters — protecting your invention.

Finding the Right Patent Attorney

Before diving into the process, a note about choosing your attorney. Not all patent attorneys are the same, and the right fit matters.

Verify USPTO Registration

Patent attorneys must be registered with the USPTO. This requires a qualifying technical degree (engineering or science) and passing the USPTO registration exam (the “patent bar”). You can verify an attorney’s registration number on the USPTO’s Office of Enrollment and Discipline website. This is a non-negotiable requirement — if someone is not registered, they cannot legally prosecute patents before the USPTO.

Look for Relevant Technical Expertise

The best patent applications are drafted by attorneys who deeply understand the underlying technology. An attorney with a mechanical engineering background will draft a better application for a mechanical invention than one whose expertise is in chemistry. Similarly, software patents benefit from attorneys who understand computer science.

My background includes a BS in Computer Engineering from Texas A&M and extensive experience across Computer Science & Software, Oil & Gas, Mechanical Engineering, Agriculture, Medical Devices, Energy, and Robotics & Automation. That technical breadth means I can work with inventions across a wide range of fields without needing to be taught the fundamentals of the technology.

Ask About Communication Style

Some attorneys communicate primarily through formal letters. Others prefer email, phone calls, or video conferences. Find out how the attorney typically communicates with clients and make sure it matches your preferences. You will be working together for months or years — good communication makes the process much smoother.

The Initial Consultation

The first step is usually an introductory phone call where the attorney evaluates your situation and determines the best path forward. Here is what to expect:

What You Should Bring

• A written description of your invention, including what it does, how it works, and what problem it solves
• Sketches or diagrams showing the key components and how they interact
• A prototype or photographs if you have them (not required but helpful)
• Information about the market — who would use this product, what competing products exist, and what makes yours better
• Any prior art you have found during your own research
• Your timeline — are you about to launch a product, present at a trade show, or seek investment?

What the Attorney Will Discuss

During the consultation, the attorney evaluates whether your invention is likely patentable, discusses the best filing strategy, and provides a general cost estimate. The conversation typically covers:

• Novelty assessment: Based on your description, does the invention appear to be new? The attorney will ask probing questions about existing products and technologies in your field.
• Filing strategy: Should you start with a provisional or go directly to a non-provisional? Is international protection relevant? See our guide on Provisional Patent Applications for more on this decision.
• Timeline considerations: Are there public disclosure deadlines you need to meet?
• Cost estimate: What is the likely cost for the search, application, and prosecution?
• Next steps: If you decide to proceed, what happens next?

Attorney-Client Privilege

From your first communication with a patent attorney, everything you share is protected by attorney-client privilege. This means the attorney cannot disclose your invention to anyone without your permission. This protection is absolute and continues even if you do not hire the attorney.

This is important because many inventors are understandably nervous about sharing their ideas. Understand that a registered patent attorney is legally and ethically bound to keep your information confidential.

The Patent Search Phase

If you decide to proceed, the next step is usually a prior art search — also called a patentability search. This identifies existing patents and publications that are similar to your invention.

What happens: The attorney (or a professional search firm working under the attorney’s direction) searches patent databases, published applications, and non-patent literature to find the closest prior art. The search typically takes one to two weeks.

What you receive: A search report identifying the most relevant prior art references, along with the attorney’s patentability opinion — an honest assessment of whether your invention is likely patentable and how broad the claims might be.

Cost: Professional patent searches typically cost $1,000to$3,000 depending on complexity.

Why it matters: The search results directly inform the claim strategy. Knowing what already exists allows the attorney to draft claims that are optimally positioned. For a detailed guide on patent searching, see How to Do a Patent Search.

The Invention Disclosure Process

Before drafting the application, your attorney needs a thorough understanding of your invention. This goes beyond what you discussed in the initial consultation.

The Invention Disclosure Document

Many patent attorneys use a structured invention disclosure form that asks you to describe:

• The complete technical details of how the invention works
• Every component, step, or element
• Alternative embodiments — different ways the invention could be implemented
• The advantages over existing solutions
• The specific problem being solved
• Any test results or performance data
• Who contributed to the invention (important for proper inventorship)

The Disclosure Meeting

After reviewing your written disclosure, the attorney typically schedules a detailed discussion — by phone, video, or in person — to ask follow-up questions, explore variations, and ensure nothing is missed. This is one of the most important meetings in the entire process.

Tips for a productive disclosure meeting:

• Be thorough. Mention every feature, even ones you think are minor. The attorney may see patentable aspects you overlooked.
• Discuss alternatives. Even if you plan to build the invention one specific way, describe other ways it could work. Broader disclosure supports broader claims.
• Be honest about what is new. If certain aspects of your invention are conventional, say so. The attorney needs to know where the novelty lies.
• Ask questions. If you do not understand why the attorney is asking something, ask for clarification.

The Drafting Process

Once the attorney has a complete understanding of your invention and the prior art landscape, the drafting begins. This is the most technically demanding phase.

What Gets Drafted

A complete patent application includes:

Specification: A detailed written description of the invention, including:

• Background — the field of the invention and the problem it addresses
• Summary — a high-level overview
• Detailed description — a thorough, technical explanation of how the invention works, including multiple embodiments
• The specification must be detailed enough that someone skilled in the field could reproduce the invention (the “enablement” requirement)

Claims: The legal heart of the patent. Claims define the boundaries of your exclusive rights. A typical application includes:

• Independent claims — broad claims that stand on their own
• Dependent claims — narrower claims that add specific features to the independent claims

Drawings: Formal patent drawings showing the invention from multiple views, with every component labeled and referenced in the specification.

Abstract: A brief summary for search and classification purposes.

The Review Process

Most attorneys send you a draft of the application for review before filing. This is your opportunity to:

• Check technical accuracy — does the application correctly describe how the invention works?
• Identify missing features — is there anything important that was not included?
• Review the claims — do you understand what they cover? Ask the attorney to explain any claim language you do not understand.
• Suggest improvements — your practical knowledge of the invention may reveal aspects the attorney could not have known

Expect one to two rounds of revisions. The drafting and review process typically takes three to six weeks.

Filing the Application

Once the application is finalized, the attorney files it with the USPTO. Here is what happens:

• Filing receipt: Within a few days, the USPTO issues a filing receipt confirming that your application has been received and assigning an application number.
• “Patent pending” status: From the moment of filing, you can legally describe your invention as “patent pending.”
• Publication: Non-provisional applications are published approximately 18 months after the earliest filing date. Provisional applications are not published.

The Examination Process

After filing, the application enters the USPTO’s examination queue. As of 2026, the typical wait for a first office action is 15 to 18 months, though this varies by technology area.

Office Actions

USPTO examiners review your application and typically issue one or more “office actions” — official communications raising objections or rejections. Your attorney receives these, analyzes the examiner’s positions, and prepares responses.

Common types of office actions:

• Prior art rejections: The examiner found existing patents or publications that they believe make your claims unpatentable. The response explains why your invention is different.
• Clarity rejections: The examiner finds the claim language unclear. The response amends the claims for precision.
• Restriction requirements: The examiner determines the application covers more than one invention and requires you to choose which to pursue first.

Your role during examination: The attorney handles the substantive legal work, but you may be consulted on technical questions — for example, whether a particular prior art reference really does the same thing as your invention. Your technical insight is valuable during this phase.

Timeline: Responding to each office action typically takes four to eight weeks of attorney work, followed by a three to six month wait for the examiner’s next action. Most applications go through two to three rounds of office actions before being resolved.

For a complete overview of the patent process stages, see our Patent Process Overview.

Fees and Billing

Understanding how patent attorneys bill helps you budget and avoid surprises.

Common Fee Structures

Flat fee: Many patent attorneys charge flat fees for specific tasks — the search, the application drafting, and each office action response. This gives you cost certainty and is the most common approach for patent prosecution.

Hourly rate: Some attorneys bill by the hour, typically ranging from $250to$600 per hour depending on experience and location. This is more common for complex or unusual matters.

Hybrid: A flat fee for the application drafting with hourly billing for office action responses or other variable work.

Typical Cost Ranges

Task	Typical Cost Range
Initial Consultation	Often free
Prior Art Search	$1,000-$3,000
Provisional Application	$4,000-$6,000
Non-Provisional Application	$5,000-$15,000
Office Action Response	$1,000-$3,000 each
USPTO Filing Fees	$400-$1,600 (varies by entity size)
Issue Fee	$500-$2,000 (varies by entity size)

For a detailed breakdown, see our patent cost guide.

What to Ask About Fees

Before engaging a patent attorney, ask:

• What is included in the flat fee? (Number of claims, pages of specification, rounds of revision?)
• How are office action responses billed?
• Are USPTO filing fees included or billed separately?
• What happens if the project scope changes?

Communication and Timelines

How Often Will You Hear from Your Attorney?

During active phases (search, drafting, office action response), expect regular communication — weekly or biweekly is typical. During waiting periods (waiting for the examiner’s next action), updates are less frequent because there is nothing happening that requires action.

A good attorney contacts you proactively when:

• The search results are ready
• The draft application is ready for review
• An office action is received
• A deadline is approaching
• Any strategic decision needs to be made

Total Timeline

From initial consultation to granted patent, the entire process typically takes 2.5 to 4 years:

Phase	Duration
Search and evaluation	2-4 weeks
Application drafting	4-8 weeks
Filing to first office action	15-18 months
Office action responses	6-18 months
Issue and grant	2-3 months

The USPTO’s Track One prioritized examination program can significantly accelerate the examination phase, sometimes to under 12 months total, for an additional fee.

After the Patent Is Granted

Once your patent is granted, your attorney can help with:

• Maintenance fees: Reminders and filing of maintenance fees at 3.5, 7.5, and 11.5 years. See our guide to Patent Maintenance Fees.
• Enforcement: Monitoring for potential infringement and taking action when appropriate.
• Portfolio management: Filing continuation applications, pursuing additional patents, and aligning your IP strategy with your business goals.
• Licensing: Structuring and negotiating license agreements.

Browse our Innovation Showcase to see examples of the types of patents that result from this process.

Frequently Asked Questions

How do I know if my patent attorney is doing a good job? A good patent attorney communicates proactively, explains things clearly, meets deadlines, and produces technically accurate work. The application should accurately reflect your invention, the claims should be understandable (even if technical), and you should feel informed about the status and strategy at every stage.

Can I switch patent attorneys in the middle of the process? Yes. You are free to change attorneys at any point. The new attorney can take over the application by filing a power of attorney with the USPTO. Your files are transferred, and the process continues without starting over. There may be some overlap in costs as the new attorney gets up to speed.

What if I improve my invention after filing? You can file a continuation-in-part (CIP) application that includes the new material along with the original disclosure. The original features retain the earlier filing date, while the new features get the later filing date. Alternatively, you can file a new application covering the improvement.

Do I own my patent application from the start? Yes, unless you have an employment agreement or other contract that assigns your patent rights to someone else (such as an employer). Independent inventors own their patent applications and any resulting patents. If you have co-inventors, they share ownership unless otherwise agreed.

How involved do I need to be in the process? You should be actively involved during the disclosure and review phases — your technical knowledge is essential to getting the application right. During examination, your attorney handles most of the work, but you may be consulted on technical questions when responding to office actions. Plan to spend 10 to 20 hours of your time over the course of the process, concentrated in the early stages.

Disclaimer: All fees and cost estimates on this page are for informational purposes only and do not constitute a binding quote. Actual costs vary based on the complexity of the invention, USPTO fee schedules, exchange rates, and other factors. Contact Shannon Warren for a specific estimate tailored to your situation.

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Ready to get started? Contact Shannon Warren for an introductory call. With extensive patent prosecution experience and a proven portfolio of US patents, I guide inventors through every step of the patent process with clear communication and transparent pricing.