What should you look for in a patent attorney?
Recently, I searched online for professionals in a particular field to assist in a new business endeavor. With only a limited understanding of this field, I reached out to a few qualified individuals with credentials covering the niche I wanted to pursue. This hiring process caused me to think of what potential clients might feel when they try to choose a patent attorney.
My natural sense of apprehension when speaking with professionals found online also reminded me of the skepticism of potential clients during my free initial consultations. So let me offer a few guiding principles in choosing a patent attorney that may help you decide if our firm is a good fit.
Before you choose a patent attorney, educate yourself
Do you know the difference between design patents and utility patents? This is homework you should do on your own before speaking to a patent attorney. Being more prepared before a call will lead to a more productive conversation with a prospective intellectual property attorney.
It’s OK if you still have questions on the basics of patents. Feel free to ask general IP questions, and see if the patent attorney takes the time to explain any subtle nuances or distinctions in IP rights. If you do not understand what they are saying, then communication may be an issue if you were to engage that patent lawyer.
If initial consultations are free, as mine are, then it will be appreciated when you respect the patent attorney’s time. After 20 years of practicing patent law, I can generally sense if a potential client is serious about pursuing IP. Ask thoughtful questions that will help you determine if the prospective IP attorney will be a good fit. If you don’t know what to ask, read on.
Does the patent attorney or firm have a system for sending timely notifications and reminders?
A big part of the patent practice is staying on top of deadlines. What that means in terms of day-to-day practice is that the patent attorney, or their team, must continually remind clients to provide instructions. A good patent attorney will sometimes make you feel like you’re being hounded until you finally make a decision. Being annoyed by your patent attorney is far better than not hearing from them.
Are you dealing with a registered patent attorney or an “IP attorney”?
At a minimum, you should at least find out if you’re talking to a registered patent attorney or an attorney who claims to practice intellectual property law. A simple way to verify patent license credentials is to check if the attorney is registered to practice before the USPTO. If not, they might hold themselves out as IP attorneys (e.g., trademark and copyright filings), but they cannot prosecute patent applications.
What are insightful questions to ask a patent attorney?
If you are considering a utility patent, here are suggested questions to ask a patent attorney:
- Does the patent attorney and their IP firm bill flat fees?
- Will the patent attorney provide a fixed fee quote for the initial filing of your nonprovisional utility patent application?
- Does a patentability search (novelty search) make sense for your particular invention?
- Does the patent attorney recommend Examiner Interviews in responding to rejections?
- Would it make sense to pursue any strategies to streamline or expedite the utility patent application?
- If you do not understand how patent claims work, ask about the difference between independent claims and dependent claims.
- If foreign patents are desired, does the patent attorney have experience with international PCT applications and working relationships with foreign associates in your desired countries?
- What are rough costs of the initial filing and ongoing prosecution costs after the initial filing?
- If you are considering trademarks in addition to patents, ask about trademark costs and if the IP lawyer has any experience with trademark oppositions and cancellations.
Avoid promised results or guarantees
This may seem like a copout. If an intellectual property lawyer does not guarantee any results, then it seems like they are not responsible for the outcome of the case. That might be true. But, I think the opposite is far worse – if an IP attorney promises a result that is knowingly out of their control, then the lawyer is being dishonest.
The reality is that your advocate, however zealous, cannot control how a USPTO examiner will evaluate your patent application, especially if it’s a utility application. Perhaps the safest prediction is that there is nearly a 90% chance that a utility patent application will receive an Office Action, depending upon the type of technology and the particular art unit in the USPTO responsible for examining your application.
Do you need an NDA for the initial consultation?
Patent attorneys are bound by confidentiality obligations that apply to even potential clients. As a firm policy, we do not sign confidentiality agreements with prospective clients because:
- as lawyers, we are already bound to keep communications with potential clients confidential; and
- if a prospective client does not engage us, our firm must have the freedom to work with other clients in a particular space/field/sector/technology without restrictive contractual obligations to non-clients.
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