is it common to compile a list of questions to ask your attorney after you are satisfied with the final revision of the application?

Question

Other than the initial consultation, all of my communications with my attorney have been via email.

There wasn't really much of questioning and answering, in either direction. After each draft, I compile the changes I want in documents and send it over.

I am a bit unease, as there was never any push back or questions that the attorney asked to me. So that means everything I wrote was clear and understood, which is doubtful.

So my plan is to compile a list of all questions that I may have after I am satisfied with the final revision and then ask the questions before the draft is submitted.

Is this common practice?

Answer 1

Ask your questions along the way. Bring up any concerns you have with your attorney as the concerns arise. (Within reason*). For example, if you are going through the application, make a list of questions you may have while reviewing and submit all the questions at the same time with the revised draft.

From the attorney perspective, it may be clear. Ideally, the attorney would ask questions to make sure it is clear. Don't wait until the end to send a list of questions - that may even increase costs if it requires the attorney to rewrite significant portions of the application after you have already approved what was written.

Waiting until after the application is finished to ask questions will most likely delay your filing.

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* "Within Reason" - I mean, I have had clients that send emails multiple times a day with different ideas and thoughts they have had about how their invention will/should work. While the information itself is useful - sending it spread out among so many messages means at least some of it may not make it into the first draft. Instead, collect and collate your thoughts and ideas and send them to your attorney based on the timeframe you are working under.

Answer 2

Getting all your questions answered before filing is a good idea.

I’m a retired patent agent. I do not think I could have done a good job for an inventor without several long discussions either in person or by phone/video connection of some type. Your invention and business needs might have been very clear from your initial consultation and written communications.