New clients sometimes ask me how to choose a patent attorney. The field is specialized enough that from the outside all patent attorneys may look the same. Factors that may seem important to someone first approaching the field are often not the ones that turn out to be important later. The patent process is long, and your patent attorney is someone you will end up working with for several years or more.
The following quotes are often heard from clients that come to me after having a bad experience with the wrong patent attorney:
“I didn’t even recognize the application from my attorney as my invention.”
“I feel like I spent all my money paying to train their new attorneys.”
“I was charged for every copy and phone call but still don’t understand the total cost.”
“It’s been 4 years and we haven’t gotten anywhere with the examiner.”
Following is some inside information about how the field works and how you can start out with the right patent attorney from the start to avoid the same pitfalls.
1. Technical Experience. One of the most overlooked factors is technical experience. The attorney obtained this experience before becoming a lawyer. All patent attorneys have to have engineering or other technical degrees to pass the patent bar, but not all have the same technical experience. You want an attorney to write your patents that has technical experience most closely matching your product. Some patent attorneys claim to handle any type of patent, but the best stick to their technical field. If you have a software invention, look for a computer or electrical engineer with experience writing software. If you have a mechanical invention, look for a mechanical engineer with experience building widgets. One question to ask is whether the attorney has a resume sufficient for you to hire them in an entry level or higher technical position in your company. If not, they probably shouldn’t be writing your patents.
2. Small vs. Big Firms. I am often asked whether there is any difference between large law firms and solo firms. The truth is often that there is very little difference. It is a bit like asking who has smarter engineers, a large company or a startup. There are smart engineers at both for different reasons, and there are just as many reasons why patent attorneys choose to work in different environments. At the end of the day, you are hiring a specific attorney that will write your patents. At a large law firm, it is more likely that an associate in training will write your patent with an experienced partner reviewing their work (many law firm partners only supervise work and no longer write patents). You often only meet the partner and may only see who worked on your patent on the bill. At a solo firm, the attorney you meet will also write your patent. Having done both, I would rather have the person with the most experience spend their time on my patent. To use a surgical analogy, it is better to have an experienced surgeon perform the whole surgery than to have a resident operate on you with a supervisor popping in for a few minutes at the end. Going back to technical experience above, make sure you know who is actually working on your patent and that person’s level of experience.
3. Cost. Although patent costs vary from firm to firm, one thing I would consistently suggest is to select an attorney that will give you an accurate picture of the costs upfront, and will commit to a cap on the total bill for filing your application. Hourly billing is particularly difficult for the client, because it gives the client very little upfront knowledge about how much a particular patent will cost, and unfortunately many clients often feel like the “clock is always running”. At large firms each attorney may have a different hourly rate and some will be faster than others, making it nearly impossible to know in advance how much anything will cost. I prefer flat fee billing because it gives you the clearest picture of the costs involved so you can plan effectively. Flat fee billing is a recent trend for law firms, and most old firms still use hourly billing. Also, watch out for extremely low fees. If you shop around you will find that most patent attorneys charge within a 10-20% range of each other, but some are 50% or more less than the going rate. Unlike most areas where a smart consumer looks for a low price, this is usually a warning sign in the patent field. Someone charging an unusually low fee may have had a hard time keeping clients in the past (due to poor work or missing deadlines), or may be very inexperienced.
4. Workload. High workload is often an indicator of good patent attorneys. This is a field where the supply of patent attorneys is lower than the demand for patent services, and the field has been growing steadily even throughout the recent recession. In fiscal year 2010, the Patent Office reports 509,367 U.S. patent applications were filed (a 4.7% increase over the prior year), with only 60,000 registered patent attorneys or agents (of which, approximately 1/3 are in-house at various companies and do not write patents and another 1/3 are retired or supervise the work of others). That means that even assuming an even distribution, the average attorney is drafting 25 patent applications a year, or one every other week. Because work will naturally find those who are good at performing it (and shy away from those who are not), a patent attorney without much work could be a warning sign of prior client dissatisfaction or other issues. Like any rule of thumb, there are exceptions: some attorneys may simply choose to work a low work schedule or may be returning to the field after some event.
5. Prosecution Success. The process of getting a patent through the Patent Office is referred to as prosecution. One of the best ways to evaluate a patent attorney (and the most difficult bits of information to find) is the attorney’s success in getting patents through the Patent Office efficiently. Many clients that come to me after firing other firms have done so because the other firm has spent years in prosecution without making substantial progress. This can happen because the application was not written well in the first place or because the attorney is just ineffective at working with patent examiners. I have found that one of the most effective tools for working with the Patent Office is an examiner interview. The examiner handling the patent will often meet with your attorney if they simply request it, in a meeting called an interview. This is an incredible opportunity rarely used by many patent firms. Visiting the Patent Office and speaking in person with the examiner is often the most effective way to make progress in getting a patent. Everything in the patent record will later be used against you in litigation, so another advantage of interviews is that they are largely off the record and avoid hurting your patent during litigation.
6. Referrals. The way you find your patent attorney is often a good signal of how successful your experience with them will be. Unfortunately, many people do not know a patent attorney in advance of needing a patent. The Patent Office has only registered about 60,000 patent attorneys or agents in the U.S., so we make up less than 0.02% of the population. It is indeed a very specialized field. However, lawyers know lawyers and clients know the lawyers with which they have successfully worked. If you can get a recommendation for a patent attorney through another lawyer you trust (e.g., corporate attorneys often knows good patent attorneys) or from other businesses similar to your own, you are much more likely to start off with the right fit.