How do I choose a patent attorney?

So you have decided that you need a patent and that you would prefer to work with a patent attorney.  Once you have found some patent attorneys, how do you decide which patent attorney to work with?  Here are some factors to consider:

• Relevant Experience
• Cost and Fee Structure
• Style and Compatibility
• References
• Disciplinary Record

I would not recommend using the first attorney you hear about without at least looking into and considering some different options.  It is very easy in this day and age to find different patent attorneys who are willing to work with you.  Try to pick the best one for your circumstances.

Also note that I have not listed location as a factor.  Patent attorneys are licensed to practice patent law anywhere in the country, and most including myself have clients nationwide and even internationally.  Meeting an attorney in person can help you evaluate the style and compatibility factor, but otherwise I have not found proximity to be important to my client relationships.  Most correspondence as a matter of convenience will be by telephone or email in any case.

Relevant Experience

Make sure the attorney is a registered patent attorney.  Ask the attorney how much experience he or she has in the relevant area of patent law- drafting and prosecuting patent applications, patent licensing, patent infringement lawsuits, or whatever your need is.  Find out if the attorney has written blog posts or articles or given presentations about your topic of interest.  If they have, you can read (or view)  them and get a feel for their expertise.  Patent law is a highly specialized field and you may want someone who specializes in a particular field, not someone who dabbles in it.

Also look into what kinds of technology they have worked with in the past and what technical degree they have.  If your invention is in the field of biotechnology, that is a highly specialized field that can be difficult for someone with a bachelor’s degree in computer science or mechanical engineering and who does not regularly work with such inventions to understand.

Many times biotech inventions are handled by an attorney with a PhD in molecular biology or a similar field. If you choose to use an attorney without much experience in your field, see if they have an expert in the technology that they can call on for help if needed.  On the other hand, a mechanical invention can probably be handled by just about anyone.

You may also want to consider whether the attorney has experience in other areas that you may want to take advantage of in the future.  For example, if you know you will need trademarks in the future, it is better to find one law firm or attorney that does both patents and trademarks, rather than having to deal with a different firm for each.

Cost and Fee Structure

Cost is often an important factor for small businesses and individual inventors.  Find out the billing structure (hourly or flat rate?) and rate(s).  With an hourly billing structure, you are billed according to the amount of time spent by the attorney.  It is difficult to predict in advance how much time most things will take.  Therefore, you will not know the total cost before work is completed.

With a flat rate fee structure, you are quoted a price for the work you want done and that is how much you pay regardless of the amount of time it takes.  With a hybrid fee structure, there might be an hourly rate up to a cap depending on the type of work.

For my own practice I have chosen a flat rate fee structure, which gives my clients the ability to budget for their intellectual property expenses in advance.  It can be difficult to compare hourly and flat rate practitioners, but an attorney that uses hourly billing should be able to provide you with estimates for the amount of time various tasks will take on average, which will give you some basis for comparison.

Fees and rates can vary widely, so it is likely that this factor will rule out some attorneys if you are operating under budgetary constraints.

Style and Compatibility

If an attorney has experience in the areas of interest to you and has a reasonable cost structure, the next step is to talk to the attorney and find out if you would work well together.  For example, some attorneys just do not like to work with individual inventors, finding them to be too much of a time drain.  Others gear their practice towards such clients, as I do.  You may not be able to find this out without contacting the attorney and discussing what you are looking for.

Ask what kind of clients they represent, how often they correspond with clients and by what methods, what hours they are available, and maybe questions about themselves (“How did you become a patent attorney?”, etc.) This will help you to get a feel for their personality and for the way they run their practice.  I find that the clients who work the closest with me tend to get the very best results.  Try to find an attorney you would enjoy working with.

References

If you have been referred to an attorney by an associate or by another lawyer, ask their opinion of the attorney.  Ask about their strengths and weaknesses.  If you know someone who has worked with the attorney in the past, ask about their experiences.  You may also be able to find references online on linkedin or in various lawyer directories.

Disciplinary Record

Before settling on an attorney, check the state bar for any disciplinary complaints that  may have been filed against him or her.  This quick and simple check can help avoid the worst deadbeats and scammers.  On the other hand, a minor disiciplinary event may not necessarily disqualify someone if they are perfect in other respects.  It’s up to your judgment.

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