Top 8 Tips for Hiring an Experienced Patent Attorney[line]
So you know you have a great invention? How do you find an experienced patent attorney?
Patent law is really an esoteric field, and it is pretty much impossible for someone who doesn’t file patents all the time, to really do a complete job to critically analyzing a patent attorney’s experience. Some attorneys exaggerate their experience, avoid questions, lead the conversation away from their weaknesses.
So what you should you do?
Tip 1) Hire a patent attorney to check another patent attorney’s experience.
It takes a veteran to recognize a veteran. Let them separate the pretenders from the real deal. There is some extra cost up front, but that same attorney can also make sure you get a fair deal on the engagement letter, don’t get overcharged for work, and can help you spot errors in the other attorneys work? Do want the work done cheaply, or do you want it done right?
Tip 2) Ask the attorney for copies of patents they have gotten issued for their clients in the past three months
Hint, if they haven’t been getting new patents issued regularly, they don’t have much work volume or aren’t getting patents allowed. All things being equal, I’d go with the attorney who is getting a steady stream of patent issued. Wouldn’t you?
Tip 3) Ask for current referrals from their clients. If the attorney is good, they’ll have some.
If the attorney tells you some nonsense like, he or she can’t disclose any clients or something like that, he or she really means I don’t think I’ve done a good enough job to have my past client to refer my work. You’re the client, demand the referrals, or walk away. And notice, I said current referrals. I don’t care about what this attorney did for some client three years ago, what are they doing now.
Tip 4) Ask for peer recommendation from other attorneys in their field.
That’s right. Ask them to send you some names of their competition that can refer them. If the attorney balks at that, perhaps their peers are better than they are. Any attorney you talk to should have a slew of attorneys they know in their same legal field that can serve as a reference.
Tip 5) Ask them for three of their latest papers on patent law. They should have plenty they can send at a moment’s notice.
Attorneys are first and foremost writers. If the attorney you are speaking to isn’t writing great papers on the area of law you need help in, find someone who is.
Tip 6) Ask them to send you patents they wrote that are similar in the technical field to what you are asking for.
Patents are part legal and part technical. Technical experience is almost a requirement for doing a good job on a patent application, and if that attorney hasn’t written patents in the field you need protection in, chances are they are qualified to.
Tip 7) Make sure your patent prosecutor has licensing and litigation experience.
The experience one gains litigating and licensing patents teaches a patent prosecutor what types of claims work, how thorough disclosures should be, and how different types of claims can change the value of patent.
Hundreds of patent examiners leave the USPTO every year. Patent attorneys who have served their time in examining corps know what motivates patent examiners to allow cases. They understand how to conduct teleconferences with examiners, and they better negotiate with patent examiners, because the attorney has been in their shoes.
Got any more tips? Add them to the Comments.