Choosing a patent attorney is an important step in the invention process so give yourself some choices. Perform due diligence on two or three attorneys to see which one best suits your needs. Conduct yourself professionally because the attorney will be screening you as well. If you’ve been following my columns (go to Myra Per-Lee’s blog page)
then you know just what you need to do to hold up the inventor side of the partnership. Get ready! “This could be the start of something big!”
I laid the background to the current column in What You Need And Don’t Need In A Patent Attorney, my last blog. You may want to review it before you charge ahead.
Now that you’ve established your criteria for a patent attorney, you can begin to search for the right one. (Review What You Need And Don’t Need In A Patent Attorney
, my last blog, so you can put this article in the proper context.)
We'll focus on the following ten criteria, although you may have added some of your own.
1) Proper qualifications to practice patent law (Certification),
2) Special knowledge in your field of invention (Specialty),
3) Experience filing patents in your field of invention (Experience),
4) High success rate (80% or better) obtaining patents in your area (Patents Awarded),
5) High correlation between patent opinions and patents awarded. (Patents Awarded),
6) Brings fresh perspective to your invention (Responsiveness to Invention)
7) Respects and utilizes your concept, descriptions, analysis, and research, and, where possible (Utilizes Your Input)
8) Avoids repeating your efforts (Avoids Duplication),
9) Provides you with reasonable approximate charges for each service after your first meeting (Reasonable Fees); and
10) A working style that is a good fit with your own. (Working Style)
Notice that "attorney ads," "attorney web sites," and other forms of self promotion are not on the above list. What you are looking for on an attorney's web site is a factual resume, not window dressing. And if you find "Just the facts, ma'am. Just the facts," you'll have some important questions answered for you.
Add your own criteria to the mix above. Then determine how you will find out the answers… or how you will conduct your due diligence. All four of these methods should be utilized in finding the right patent attorney for you: 1) Referrals; 2) Research, 3) Interviews, and 4) References.
Performing Due Diligence
How do you find the above qualifications in a patent attorney? Sleuth that you are, with a little detective work, you can find just what you are looking for. Here’s how...
Due Diligence Process
qualified referral. I’m not talking about brothers-in-law. Ask your inventor group, (see Need Help? Try Inventors Anonymous ) or ask our readers for referrals, either at the end of this column in the Comments section or on our Forum.
My patent attorney, who batted 1000 for me, was referred to me by a research and development firm. Call around to small R&D firms and ask who does their patent work; make sure you ask specifically about your field of invention. (If later,you learn that an attorney does not specialize in your field, ask for a referral to one who works in your specialty.) When you do get a referral, ask the referrer questions about the attorney’s work style. Does she utilize work that her client has done, like market research, or does she prefer to do her own market research? Does the attorney work mainly by himself or does he consult with his clients during the preparation of his work? Does he welcome input from the client? If your sources for referrals dry up, do a search for patent attorneys with specific skills on the web. Try Googling “patent attorney mechanical engineer ,” “patent attorney computer engineering ,” or one with a background relevant to your invention.