• 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.

Patent attorney or patent agent?

Patent law has a specialized bar, the patent bar. Passing this bar allows you to practice patent law before the United States Patent and Trademark Office.  Unlike virtually every other area of law, you do not have to be a lawyer to pass this bar .   However, you do have to have substantial technical experience, typically a university degree in an engineering or science discipline.  A lawyer on the patent bar is known as a patent attorney .  A non-lawyer on the patent bar is known as a patent agent .

Most lawyers can never be patent attorneys (they lack the technical prerequisites), and most patent agents are not lawyers.  Every patent agent and attorney has a registration number.  Since these numbers are sequential, you can get an idea for how long an attorney or agent has been practicing on the basis of their registration number. You can verify that someone is a registered patent attorney/agent here .

What is the difference?

So, what is the difference between a patent agent and a patent attorney?  A patent agent is not a lawyer .  A patent agent can only represent you before the United States Patent and Trademark Office (PTO), which is an administrative agency of the United States government.

What if you appeal your patent application to the Board of Patent Appeals and Interferences (part of the PTO) and lose, and want to appeal to district court or the Court of Appeals for the Federal Circuit, as is your right?  A patent agent cannot do that.  What if you want some  help with a licensing agreement or some advice about what constitutes infringement of your patent?  A patent agent cannot help you with those issues- it would be against the law for a patent agent to give you such advice.

A patent agent cannot help you with infringement issues or licensing issues, or with corollary issues such as trademarks, copyrights, or trade secrets. This goes beyond what they are licensed to do- practice before the Patent Office.  You do not need to have any knowledge of the broader legal issues mentioned above to join the patent bar.

So the role of a patent agent is very narrow.  A patent agent cannot be your go-to guy for all intellectual property.  If intellectual property is a significant part of your business plan and you have worries about infringement or expect to need trademarks in addition to patents, a patent agent may not be the best choice.  In fact, I would even be concerned about using a patent agent just to prosecute your patent applications.  If a patent agent cannot tell you anything about infringement, how can they draft solid patent claims that protect you against infringers?  The art of claim drafting is the art of using the perfect language to capture your invention and avoid the prior art, while still managing to capture infringers and prevent others from designing around your patent.

My recommendation

In short, patent attorneys have been through three years of law school and passed a state bar exam.  On average, they have more knowledge about a broader range of intellectual property issues.  Of course, this also means they charge more than patent agents on average.  If you know what you are doing, have a narrow need (prosecution of a patent only), and know a good patent agent that provides a superb value, going with the patent agent may be the right move.

On the other hand, if you can get a good patent attorney for a similar price, are new to patents and need a lot of questions answered, or anticipate making use of a knowledgable patent attorney throughout the life of your business, I recommend choosing a patent attorney.

Please let me know if you have any questions I have left unanswered or if you feel I have misstated anything.  I may catch some flack from some patent agents But, I think I have been fair.  Any agents out there, you can make your case in the comments below.

I do not suggest you represent yourself

First things first- should you represent yourself?  There is only one good reason to do so- cost .  Filing yourself will save you attorney’s fees which can range from $5,000 to $20,000 or more over the application process.  But there are many reasons not to go it alone.  First, those cost savings may not be as great as they first appear.  You have to account for the cost of your own time.  At the minimum, you have to value your time at a lower value than the hourly rate of a patent attorney (generally $200 and up) to make it worth your while.

But you also have to take into consideration that patent attorneys are specialists in patent prosecution who may work on hundreds of applications in a year and as a result are more efficient than a lay-person.  Unless you are very familiar with all aspects of patent prosecution, including necessary forms and submission procedures and relevant case law and MPEP guidelines, it will probably take you at least twice as long as it would take a patent attorney to do the same amount of work.

Furthermore, it is not reasonable to expect that you will manage to obtain the same results as a good patent attorney.  As with any legal matter, familiarity and experience are critical.  It may be true that you know your invention better than anybody else, but you probably do not know the law better than anybody else, and knowledge of the law is critical to obtaining solid patent protection.

Any statement you make over the course of prosecuting your patent application can be used against you in the future, not just by the patent office, but also by infringers who seek to invalidate your patent years later. If you do not draft your claims correctly, or follow the suggestion of an Examiner and amend them too narrowly, you may find your patent provides you with little protection and is of no use to you other than as a decoration.  A single word may be the difference between protection and a lack thereof.

Worse, there may be no way of knowing whether you have made such a mistake or not.  Any test by an infringer may come years after your patent has issued.  Imagine the following scenario: you draft and file an application, successfully prosecute it and obtain an issued patent, and begin building your business in reliance on the protection your patent provides.    You bring in investors, sink your capital into manufacturing capcity, ink deals with distributors, and begin a marketing campaign.

Then you find a large corporation has stolen your idea and is marketing it in an identical fashion.  You threaten to sue and they refuse to negotiate, saying your patent is invalid.  The company sues you preemptively and the court declares your patent invalid.  In the meantime, you have gotten several more patents the same way.  Are they invalid as well?  Suddenly, the solvency of your business is in question.

When you invest in a good patent attorney to prosecute your patent applications, you pay a little money up front to potentially save you enormous amounts of money down the road. I would rather pay a good patent attorney to get me valid patents that stand up to scrutiny than pay a great patent litigator to save my butt in court after my patents are challenged.  As in many legal matters, you can pay a lawyer a little up front, or a whole lot down the line.

When should you do-it-yourself?

So, you get the idea.  I do not think it is a good idea to prosecute your own patent applications.  When might it be okay to do so?  Well, when you are not worried about the problems I outlined above.  Maybe you are a patent attorney yourself.  Maybe you are not interested in going into business and only want official acknowledgment of your invention that you can hang on the wall.  Or, maybe you just don’t have any money and have no choice.  But unless you really are flat broke, in which case I wonder if you should be spending your money on government fees, you might be surprised how affordable good representation can be.

Alternatives

Find a good solo practitioner or small firm to that you are comfortable with (more on making this selection in the next post) and let them know that money is a concern.  Do as much of the work as possible yourself, but make sure everything is reviewed and submitted by your lawyer.  By doing this, particularly if you are familiar with the patenting process, you can cut costs a great deal.  You might be able to cut your costs to $6000 or $7000 over 5 or 6 years.

If you cannot afford that, you might be better served to get a provisional application filed.  This is relatively inexpensive, and may cost $1500 or less.  If you prepare the application yourself, it might cost as little as a few hundred dollars.  There is risk in this, though (more on that in a later post).  Once your provisional application is filed, you have a filing date and a pending application and can talk to others about your invention without worrying too much about your idea being stolen.  Investors will also take you more seriously with a pending patent.

Now, make the rounds.  Try to get someone interested in your invention.  You have 12 months from the date your provisional application was filed before you need to file a full utility application.  If you can bring investors on board before that time, you can use their money to pay for the application.  And more than likely they will recognize that this is a good use of their money and a solid investment.

In the next post, I will discuss the factors to consider in selecting your representative.  If I have overlooked anything in this post, let me know by email or in the comments.