Finding The Best Patent Attorney For You
This is the fourth post in my series entitled “How To Find A Patent Attorney: My Guide for Performing Your Own Patent Attorney Search.” If you read my second post, you will know that I recommend that founders of start-ups, entrepreneurs, and general counsel of small businesses search for a patent attorney at a law firm of 20 or fewer attorneys, preferably 10 or fewer attorneys. If you read my third post, you will know which type of attorney to search for based on the service that you need.
Now, it’s time to focus on matching your needs to their experience. Therefore, I suggest that you further narrow your search for a patent attorney based on their technology area, the focus of their practice, and their years of experience.
No One Can Do It All
Patent law is an incredibly complex and dynamic area of law that deals with the incredibly complex and dynamic area of science and technology. Patent attorneys who claim they can do it all remind me of the old snake oil salesmen. Their healing tonics could cure everything from cancer to warts to the common cold! Just one dab will remove stains from clothing too!
No one can do it all. Responsible patent attorneys focus their practice.
Search for a Technical Background That Matches Your Needs
To become a patent attorney or patent agent, the USPTO requires that a professional have a college degree or its equivalent in a science or engineering field. This educational requirement is the bare minimum to perform patent prosecution work. Many patent attorneys and patent agents enter patent practice with a master’s degree or Ph.D. in a science or engineering area. From there, they build most of their patent prosecution experience around this area of expertise.
This area of expertise is where they will probably have the most experience, do their best work, find the most enjoyment, and communicate most easily with inventors and patent examiners. Therefore, this technical area is probably where they will work most efficiently and effectively for you. Chemical companies strongly prefer to hire patent attorneys with a strong chemical background to prosecute chemical patents. Cell phone companies usually hire patent attorneys with a strong electrical background to prosecute cell phone patents.
Does this mean that patent attorneys can’t prosecute patents outside of their technical area of expertise? No. It just means that you might be better choosing a patent attorney with a background that matches the technology you are working in. For example, I have a Ph.D. in chemistry and feel comfortable helping clients get patents in pharmaceuticals, biotech, petroleum, polymers, lubricants, and more.
I have helped clients obtain patents in computer software and electronic devices. However, I usually ask potential clients if they would prefer a referral to a patent attorney with a computer background.
Therefore, consider the technology area of your invention or business, and search for a patent attorney with a strong background in that area. For patent preparation, patent prosecution, and patent opinion work, I suggest limiting your search to a patent attorney with a master’s or Ph.D. in your technology area.
Pro Tip: Many patent attorneys list on their website every technology they have ever worked on, even if they only worked on it once. Before you hire a patent attorney, ask how many applications they have handled in your technology area. More than 1? More than 10?
Search for Service Experience That Matches Your Needs
The term intellectual property attorney refers to an attorney who works in any field of intellectual property, including patent law, trademark law, copyright law, and trade secrets. These are completely different areas of law.
Within patent law, “patent preparation” and “patent prosecution” refer to the service of helping clients get patents. “Patent litigation” refers to the service of a suing people based on patents. “Patent opinion” work refers to the service of determining if a patent is valid or infringed. “Patent licensing” work refers to negotiating and/or drafting contracts for patents and patent applications. These are different skills.
Many patent attorneys will list their years of legal experience and list every area of patent law they have ever practiced in. Worse, many patent attorneys will combine their years of legal experience and scientific experience together, so that they can brag about having more than 20 years of experience. Helping to prosecute one patent does not make them a skilled patent prosecutor. Performing document review doesn’t make them a star patent litigator.
If you’re looking for a patent attorney to help you get a patent, I recommend searching for a patent attorney who focuses on patent law. No trademarks. No copyright. No distractions.
I further suggest that you search for a patent attorney who focuses most of their web page discussion on patent preparation and patent prosecution. Of course, the same applies to patent opinion work, litigation, and licensing. The goal is not to figure out how many years of science and patent law experience a patent attorney has, or even how many years of patent law experience they have. If the service you want is help obtaining a patent, the goal is to determine how many years of patent preparation and prosecution experience the patent attorney has. Match the service you want with their specific experience.
For patent preparation, patent prosecution, and patent opinion work, I suggest limiting your search to a patent attorney (or patent agent) who has at least 2 years of experience providing just these services.
Pro Tip: Ask who will actually be doing the work. Many law firms will have you talk to a partner who may have over a decade of experience in an area of patent law. Then they may hand the work to an associate with little or no experience. That means that at least 90% of the work is done by the associate. Ask about the associate’s experience, billing rate, etc.
Search by Location
A U.S. patent attorney or U.S. patent agent can represent clients all over the U.S. or even the world. I have represented clients for years that I have never met in person. We communicated by phone, email, and fax. Free services like Skype and Gchat make this even easier. However, if you like the idea of meeting your patent attorney face to face, you may want to search by state or city.
Alternatively, if you want to save money, you may want to search for a patent attorney that is located outside of expensive areas. For example, New York City, Chicago, Silicon Valley, Boston, and Washington, D.C. are infamous for being ridiculously expensive places to live and work. You can probably find a patent attorney who can provide better services and/or lower rates in places such as Houston, Texas; Denver, Colorado; Detroit, Michigan; or Indianapolis, Indiana.
These are places where innovation meets a reasonable a cost of living.
The next post in my “How To Find A Patent Attorney: My Guide for Performing Your Own Patent Attorney Search” series will cover “How To Search For A Good Patent Attorney.” Click here for the fifth post.