How to Select a Patent Lawyer—Patent Preparation/Prosecution


Choosing a Patent Lawyer
Selecting a Patent Lawyer (Naypong/

Selecting a patent lawyer, or any lawyer, can be challenging.  Especially if you are new to the patent process, it can be difficult to know what to look for or what questions to ask.  We have developed some tips that can help with this process. 

These tips are focused on the search for a patent attorney to perform services such as counseling, patent searches, preparing patent applications, interacting with the Patent Office to get a patent allowed (referred to as “patent prosecution”), opinions, due diligence, and licensing.  In another post, we will discuss the selection of patent litigation counsel, which involves different considerations.

Our tips are based on our belief that clients should act as their own advocates with their attorneys.  Your business, money, and ideas are at stake.  No one knows them better than you.  You owe it to yourself to make sure that you are heard and that your input is appropriately considered.

 Here are some questions you should ask and things to consider in selecting a patent lawyer:

     1.  Do You Need the Resources of a Large Firm?

If you have the need for a “one-stop shop” to handle a variety of different types of legal matters (e.g., intellectual property, corporate, tax, etc.) it may make sense to go to a large firm.

Also, if you have a very large patent portfolio, you may need the resources of a mid-size or large firm, one that will provide multiple attorneys and paralegals working on your matters and the docketing personnel and systems that many big firms often have.  However, keep in mind that with large firms comes large overhead. The overhead is ultimately wrapped into the fees you will pay.  Guess who pays for the marble staircases and expensive art on the walls?

Consider whether it is worth it in your case.

     2Do You Need In-Person Interaction?

Patent law is federal and not state specific, so you do not need to hire a local attorney, unless you want to.  Invention details can readily be communicated by e-mail, phone, and web conferencing applications.  Nevertheless, some clients are more comfortable with in-person interactions, in which case the attorney’s location matters.  It’s up to you.  If the attorney’s location is not critical, you may have more options and may more easily find an attorney to your liking. 

      3.  Who Will Actually Work on Your Matters?

You should be clear on which attorneys will be doing the work.  Especially in larger firms, you may interact with a “relationship partner” or some other senior attorney who acts as the face of the firm but who will not actually do the work.  Instead, such attorneys often delegate work to more junior attorneys, some of whom may be using your matters as a training exercise.  The level of supervision provided to such attorneys may vary by firm, and you may not be experienced enough yourself to judge the quality of their work.

Of course, the technical expertise of the attorneys working on your matters may also be critical.  The lawyers need to be able to speak and understand the language of your technology to make sure that it is adequately described—and claimed—in a manner understood by those skilled in the art to which it pertains.

If you want to make sure that the senior, more experienced attorney is doing the work, insist on it.  Keep in mind, however, that their rates will be correspondingly higher and commensurate with their experience level.

     4.  Do the Attorneys Working on Your Matters Have Enforcement Experience?

Valuable patents are those that can be enforced in court, if necessary.  A well-written patent application is crafted to account for the realities of what will happen if the patent ever gets into court.  If that happens, defense attorneys will scrutinize your patents to look for anything they can exploit.  If you want valuable patents, make sure that someone involved in preparing them makes sure they are written with an eye towards litigation

     5.   How Will the Attorneys Responsible for Your Matters Communicate With You?

I believe this is absolutely critical.  You may not be a patent expert, but you are the expert on your business.  You need to know that your input will be heard and considered in a timely fashion.  You also need to be informed of matters relevant to your patent portfolio within a reasonable time frame.  For example, when office actions are issued you should not first hear about them one week before their response deadlines.

You will likely have suggestions from time to time about how your patent applications should be handled.  In my view, it is important to pick an attorney with whom you can engage in constructive and helpful dialogue to vet your ideas.  Some of your ideas may ultimately not fly, but you still need to be able to discuss them in a respectful and productive way with your attorney.  What you do not need is to have your input ignored or to be treated dismissively. 

This is an area where attorneys vary greatly.  Poor attorney responsiveness and communication is the cause of a significant number of the grievances that are filed against attorneys.  You should expect your phone calls and e-mails to be responded to in a reasonable amount of time.  This may seem commonsense, and it is, but many attorneys cannot or will not respond in a timely and thoughtful manner to client communications.  You should make sure that yours can and will, and you should express that expectation clearly and early in the relationship. This also may seem commonsensical.  However, I have worked with attorneys that discourage this sort of client interaction by intimidating their clients and discouraging clients from questioning their advice. You do not need to put up with this and should look for an attorney who communicates with you in a way that works for you.

In the patent prosecution context, you will want to understand what your claims will cover and why your claims are limited to particular points of novelty.  You will also want to understand what the Patent Office’s position is on your patent applications (e.g., why they have rejected your claims if that is the case) and what you can do about it.  It is also important to make sure that the arguments and claim amendments your attorney is making are consistent with your goals.  This will take time and effort on your part.  However, valuable patents are those which are aligned with the goals of your business, so your input is an essential part of the process.

These tips are not exhaustive.  However, they should help you get started in selecting a patent attorney.

One Thought to “How to Select a Patent Lawyer—Patent Preparation/Prosecution”

  1. Jon Shiell

    Great overview, but one point I think you underplay is the patent attorney able to “speak your language” or does the firm have an internal or external area expert available to “translate” between you and the patent attorney.
    Also on the inventors side, at least from my viewpoint, it it not possible to overstress the importance of providing the patent attorney with both one or more reasonable drawings and a written description of the invention, including some attempt to explain why your invention is different from the current field.

    Lastly Steve hits one MAJOR point very well; the best patents come from interaction between the inventor and the patent attorney if you don’t feel the patent attorney will “communicates with you in a way that works for you.” get a different patent attorney. Along that line: as the inventor you MUST understand the claims the patent attorney prepares for you as these are the definition of your invention, be sure the patent attorney can explain them to you in a manner you can understand and is willing to take the time to do so.

    BTW: a normally less expensive alternative to a patent attorney is a patent agent. Steve’s overview applies to them too except agents can not do any enforcement activity, this tend to have little exposure to that area.

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