Let’s assume you’d like to file a patent application. How do you find a good patent attorney? Not only that, how do you find a patent attorney you’ll love working with?
In this article, we’ll walk through several options, a few things to consider, and provide a checklist to guide you on your journey.
Why Do I Need a “Patent Attorney” in the First Place?
Why can’t you just use your regular business attorney? After all, that person may have filed your trademark application. Can’t they handle patent applications as well? The answer is almost always “no,” but it’s not because your business attorney isn’t a great lawyer. The real reason is that, in the United States, attorneys must be registered with the US Patent and Trademark Office before they can legally assist anyone with a patent application.
Getting this registration requires (a) an undergraduate degree in a technical or scientific subject (e.g., engineering or physics), and (b) passing a second formal exam (the Patent Bar Exam) in addition to the usual state bar exams all lawyers must take. These additional requirements, coupled with the fact that you have to want to practice patent law in the first place, means that patent attorneys are specialists. As such, they (we) rarely operate outside of the realm of intellectual property law in general.
Where Do I Look for a Patent Attorney?
This will depend a lot on your specific situation. However, here are several good options.
- Maybe you already have access to one. Check with the attorney(s) you already have engaged. If you’re using a large law firm, there’s a chance they have patent attorneys on staff. If not, or if your existing firm doesn’t have a patent department, your attorney should at least have a good patent attorney or two that they can recommend.
- Ask for referrals. Talk to other companies about who they’ve used for their patent work, and whether they’ve been happy with the experience. Maybe some of your own employees worked with a patent attorney at a previous job. Check with industry groups and associations. Even friends and family can sometimes be helpful.
- Use Google and search online. Most patent law firms don’t advertise, per se. However, like most businesses, they’ll likely have a website you can locate via an Internet search.
- Look outside your local geographical area. With each of the options I’ve mentioned so far, don’t worry too much about whether the patent attorney is located nearby. Patent law is federal, and therefore essentially the same across the country. That means (unlike family law, for example) you don’t have to use a lawyer in your home state. It also means you have a larger array of quality and cost options to choose from. Many patent law firms represent clients throughout the country, and are set up to handle everything remotely.
- Check with the USPTO here. If you’re still not finding what you’re looking for, or if you want to confirm that an attorney is registered and in good standing, the USPTO’s site will give you a listing of every patent attorney that meets your search criteria.
How Do I Know the Patent Attorney is a Good Fit?
Whether or not a patent attorney is a good fit for your situation will depend largely on three factors: practice area, price, and personality. Here’s how I look at these three factors:
- Practice Area. The patent attorney has to practice in your technology area. It’s just a threshold they simply have to meet. However, it’s not as big a deal as it might seem. The question is whether they can handle your invention’s subject matter, not whether they specialize in your very specific technology.Most patent attorneys work in one or two very broad areas. These areas or categories tend to be things like “mechanical,” “software,” “pharmaceuticals,” “biotech,” etc. So, for example, you don’t need a patent attorney who hyperspecializes in bicycle derailleurs to handle your patent application on that subject. Just one who can grasp and write about the way those mechanisms operate. Furthermore, the person’s exact undergraduate degree doesn’t have to match up with their area of expertise. It’s much more about familiarity and work history. Ask the prospective patent lawyer whether they’ve handled patents in your product’s technology area (or a related one) before. It’s usually pretty straightforward.
- Price. You should expect to pay for your patent attorney’s services. That being said, aside from the extremes, price shouldn’t be too much of a factor in distinguishing your choice of attorney. Granted, there are some patent attorneys who charge triple what others do. However, the vast majority of practitioners fall into a middle range. Just ask your prospective patent attorney what their ballpark estimate is for filing your patent application. In most cases, everyone will be around the same range. I would definitely urge you NOT to shop around for the lowest cost. With patents, you generally get what you pay for (up to a point). Higher quality requires more time and effort. Below a certain level, you will not get the effort needed to file a quality patent application. One other thing to note is whether the patent attorney charges by the hour, on a flat fee basis, or some combination of those.
- Personality. This is the most important factor in whether you will enjoy working with your patent attorney. Keep in mind that there may be at least two relationships to worry about here:First, is the patent attorney a good fit for your manager, CTO, etc., who they’ll interface with to discuss strategy, billing, etc.? Second, and equally important, is the patent attorney a good fit for the engineers and techs who they’ll work with to prepare the patent itself? Patent attorneys, like all humans, come in a variety of personality types. Don’t settle for one you don’t really enjoy dealing with.
How Do I Check for a Good Fit Before Spending a Lot of Money?
The easy answer here is to speak with the patent attorney(s) on your list. They should all offer a free initial consultation. That’s pretty much industry standard. When you meet with the patent attorney, either in person, over the phone, or on a video call, check each of the factors outlined above. To make it easy for you, I’ve created a free checklist. Print it out and take notes. You’ll be happy you did.
That’s all there is to it! Don’t forget to grab your free checklist based on this article. Let me know if you have any questions. And if you really do need a patent attorney, I just happen to be one. Click on the button below to set up a time for us to talk!
Blog Post © 2018 Kolitch Romano LLP
Photo © 2014 Dave Bourgeau (Mineral County, Montana)
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.