Do you need to find a new patent lawyer?
Existing relationships are sticky. Like glue, we tend to stick to an existing relationship with a service professional and just maintain the status quo. When circumstances may warrant a change, we sometimes do not feel like taking the time to find a new professional. Even when we know it’s time, we might not know where to begin. What are the signs that you need a new patent lawyer? If the time is right to make a change, how do you go about finding the right patent attorney?
What are some excuses that do not justify changing your patent lawyer?
The patent application process is inherently challenging. Much larger forces are at work in terms of how the U.S. treats the procurement and enforcement of patents, so certain things may simply be out of your patent lawyer’s control. Before jumping ship, let’s look at a few reasons that would not justify switching teams.
Excuse 1: Your Patent Application Has Been Rejected (for the first time)
It can be frustrating to have your patent application rejected by the USPTO. Before firing your patent lawyer, recognize that Office Actions are normal in utility patent applications. In fact, about 90% of nonprovisional utility patent applications get rejected at least once. It can often take three Office Actions or more to get a patent approved.
Yet, we all know there is no guarantee that a utility patent will ultimately be allowed. Though the need for a change might eventually materialize, just recognize that it can be premature to make a switch at the first patent rejection.
Excuse 2: Your Patent Application Is Taking Too Long
We all hate waiting. You need your patent or trademark registered, and you need it now. I get it. But is the long wait time your attorney’s fault or the fault of the USPTO? The issue is whether you’ve been advised of your options to reduce the wait time.
Has your patent attorney advised you of options to expedite your design patent or speed up your utility patent? Does your team include an inventor at least 65 years old? If so, has a petition based on age been filed?
Now let’s turn to more significant reasons for making a switch.
Will your patent lawyer retire soon?
Perhaps there was nothing wrong with your patent lawyer, but time has flown by. If your current practitioner is retiring, should you stick with their law firm? How would their successors handle your cases?
One potential benefit of staying with the same IP firm is that you might be able to keep the same costs. What if a new patent firm might actually save you money?
Has your patent application been rejected multiple times?
When it comes to getting utility patent applications allowed, a practitioner must be skilled in the art of persuasion. Your adversary – the patent examiner – is also the judge. Just think about the last time you got into an argument with someone. How successful were you in convincing them to take your position?
Technical arguments are important in an Office Action response, but you cannot overlook the human factor. You are not trying to convince a machine, as if feeding it certain logic and inputs will result in an expected outcome. Instead, you need to persuade a human being to change their mind. Your patent attorney should address the human element in a manner that will facilitate the withdrawal of your rejections. There is a way to be gentle, yet firm.
Does the new patent team include a former USPTO examiner?
As your spokesperson, your patent practitioner must strike a delicate balance with the opponent who is also your judge. This is why it helps to have a former USPTO patent examiner on your team. A patent attorney who is a former examiner can quickly establish rapport with the USPTO examiner assigned to your application. They talk the same language. They share similar experiences.
How prompt and available is your patent lawyer in communicating with you?
Do they promptly return calls? Do they reply to your emails by the end of the business day or the next day? If your patent lawyer is unavailable for a brief time, can you reach out to a team member who can address your question or need?
Everyone has busy schedules. At a minimum, does your patent lawyer send a short reply to schedule a mutually available time for a longer call?
Does the new patent attorney have litigation experience?
Even if you never intend to litigate, you want your patents to be defensible. Your patents should have real teeth in the marketplace. What good is a patent if competitors can easily design around your claims? Will the new patent attorney provide smart strategies around filing continuing applications.
Does the new patent attorney understand the balance between infringement and validity? Do they have experience with patent enforcement? Have they handled Amazon patent disputes? Do they know how to write effective cease-and-desist letters or caution you against sending one if the risks are too high? Have they defended against claims of patent infringement?
Does the new patent attorney have international experience?
If you care about obtaining foreign utility patents, your patent attorney needs to be familiar with the PCT application. You may also want to consider utility model applications in eligible countries.
Furthermore, it helps if your patent attorney has relationships with foreign IP attorneys in Asia, Europe and Latin America.
Does the new patent attorney have trademark experience?
Any business that needs patents will also need trademarks. While you can certainly use different law firms for each IP, would it make more sense to consolidate patent and trademark services into a single law firm? Better yet, why not find a patent attorney that has experience in both patents and trademarks, in both registration and enforcement?
Should a third party oppose the registration of your trademark, has the patent attorney handled TTAB trademark oppositions?
Will the new patent attorney bill hourly or flat rates?
We bill flat rate patents and fixed fee trademarks. Furthermore, we are willing to consider price-matching competitive quotes by other firms.
Need a new patent lawyer?
We cannot guarantee that our firm will be the best fit, but you owe it to your business to find out. Call patent attorney Vic Lin at (949) 223-9623 or email email@example.com to see if we can do a better job at a lower price.
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