The Internet makes it very easy to learn about the professional qualifications and skills of your prospective attorney. Not only can you read what the attorney writes about himself on his website, but you can go directly to an unbiased source, the Patent Office! You can ascertain his license to practice patent law by checking his status on the USPTO database of patent attorneys. A patent attorney must keep up her license to practice law in her state, as well as her USPTO requirements, so there is no need to double check with the state bar association.
(A patent agent must pass the USPTO examination to enable him to prosecute patent applications, but does not need a license to practice law. Although I am not specifically recommending that you work with a patent agent, the same means are available for finding and screening agents as for attorneys.)
In addition to an attorney’s qualification to practice patent law, you can also check out the patents he’s obtained for other clients, so you have a general idea of his success and experience. I didn’t know how many patent applications my attorney had filed, but when I searched for those that he’d been awarded on behalf of his clients, I found more than 700 patents.
To obtain this information about a patent attorney, you’ll do a search from the USPTO’s advanced search page and enter the following in the “query” box: LREP/"Last Name First Name Initial or Middle Name" So, if the attorney’s name is John X Doe, you would insert: LREP/”Doe John X” … Quotation marks are included as shown.
I’ve never met my patent attorney. Over the years I worked with him, he lived in three different states, none of them mine. Proximity was not a factor for me, but if is for you, find patent attorneys by state at the USPTO site, or if you’re really xenophobic, by zip code at Patents.OnCloud8.com.
Otherwise, prepare for a telephone interview. “Prepare” is the operative word here, so you don’t waste your time or the attorney’s. A favorable impression of you will help the attorney decide if she wants you as a client. One of the most difficult things to do in any interview is to question someone about their experience without sounding confrontational, but this is business, so be courteous, but direct. You should prepare for a 30 to 40 minute interview, remembering that the attorney will also have questions for you.
Expectations of a Patent Attorney
Tell the attorney how you found her. Were you referred? By whom? Give a general description of your invention – a two sentence summary, the research you’ve done, and what you will be requiring from a patent attorney. Make your presentation short; this is a meeting for prospective client and attorney to see if they are a good fit. (As long as you are disclosing your invention with a patent attorney for the purpose of establishing a client relationship, your disclosures are considered to be covered by attorney/client privilege and you do not need a non-disclosure agreement to secure confidentiality.)Tell the attorney what approach you would like to take in pursuing the patent process. For example, would you like the attorney to look over your preliminary patent application before you send it in? Will you want him to conduct a patentability opinion on your invention? Ask him for a written statement of fees on whatever services you expect his office to conduct. What kind of flexibility will you need for payments?
Although the attorney will likely have spontaneous responses to your comments, have a list of questions ready if she does not cover what you need to know. If the attorney has volunteered any of this information, you can just check off the item so you don't ask it again. Here are some questions that might be appropriate, but write down what you want to know from the interview.
- What percentage of your patent applications have been awarded by the Patent Office?
- To what degree can I assist in the preparation of the patentability opinion and the patent application?
- About how long will it take to provide me with a patentability opinion?
- I am in a hurry to file a full patent application. How long will it take? Will you utilize the work I've already done?
You might want more information about the attorney’s background. For example, you might want to know if he’s worked directly in your field of invention. Was he a programmer who then went into patent law? How much patent experience does he have?
Personally, I have a preference for former patent examiners.Ask for three references to clients that he’s worked with in the past three or four years.Leave the conversation on an up beat. No decision is required at this time. Like interviews, reference calls are two-way: impressions are formed on both sides, so leave a good one. References should be contacted by phone, if at all possible. You do not want your email, for example, passed on to the patent attorney, nor does the reference want her email passed on. You can make the initial contact by email and arrange with the reference a time when it is mutually convenient to call. Basically you want to find out about the reference’s client/attorney experience.
- What services did the attorney perform?
- Was he successful? If not, why, in her opinion?
- What is the attorney’s work style?
- Were the fees commensurate with other patent attorney’s fees for the same work?
- Did the attorney utilize any of the client’s work in preparing a filing for the USPTO?
- Did the attorney provide any new insights to the invention?
New inventors often have a lot of questions about the due diligence process; hopefully, I have answered most of them. If not, please ask them in the Comments section below. Also, feel free to share your own experiences finding a patent attorney!
To read the Patent Process columns in order, go to my blog and start with the column at the bottom of the page!Myra Per-Lee