19 Apr 2018
If you’re reading this post, perhaps you’re dissatisfied with your patent attorney’s services — and wondering whether it’s finally time to call it quits.
Attorney-client relationships don’t always work out for a variety of reasons, and you’re within your rights to discharge your attorney at any time.
It also takes time and effort to get a new patent attorney up to speed, and there could be some short-term costs associated with making the shift. So be sure you’re seeking new counsel for the right reasons — whether that involves incompetence or unprofessionalism.
7 MUST-HAVES FOR A GOOD PATENT ATTORNEY
Any competent patent attorney that you hire for patent prosecution services should counsel you on all of the issues listed below.
If they don’t, they’re either not being thorough with your case, or may not be well-prepared to handle patent matters — and you may need to evaluate your options for finding more competent representation elsewhere.
1. OWNERSHIP ISSUES
Your attorney should talk with you about patent ownership and, if needed, offer advice to ensure proper assignment of ownership.
2. INTERNATIONAL FILING OPTIONS
Your attorney should inform you of the potential costs and benefits of seeking patent protection outside the United States. They may help you assess whether foreign patent protection is right for your business — and if yes, where you should consider filing.
3. CLAIM SCOPE
Your attorney should talk through the scope of protection that each patent application will cover. In addition, they should confirm that the scope is appropriate for your invention and avoids known prior art.
4. ENTITY STATUS
If you’re a small business, your attorney should help you decide whether to claim small entity status in your patent applications. If you’re eligible, establishing small entity status with the USPTO can save you a significant amount in filing fees. But sometimes it’s better (or even required) for a small business to pay large entity fees. Either way, your attorney should help you figure this out.
5. DATES OF FIRST PUBLIC DISCLOSURE OR SALE
To investigate filing deadlines, your attorney should ask you when the invention was developed, and whether it has been publicly disclosed, used, sold, or offered for sale (or if there are any plans to do so).
Specifically, the United States offers a one-year “grace period” before your own public disclosures or sales are considered prior art — but most other countries do not. Your attorney should be taking these deadlines into account.
6. TIMING AND DOMESTIC FILING OPTIONS
Your attorney should ask about your business priorities to determine whether certain filing options would make sense for your business, including:
- Filing a non-publication request
- Filing a provisional application
- Taking action to speed up or slow down prosecution
7. PRIOR ART
Your attorney should ask you for all prior art that might be relevant to your invention. Both you and your attorney have an ethical duty of candor and good faith to the USPTO, meaning you should disclose to the USPTO any and all information that could affect your invention’s patentability.
5 RED FLAGS IN THE ATTORNEY-CLIENT RELATIONSHIP
On the flip side, you might have hired someone with a reasonable amount of expertise in patent prosecution — only to realize that it’s simply not a good fit. Keep an eye out for the following red flags:
1. THEY’RE BEHAVING UNETHICALLY
If your attorney ever advises you to lie to the USPTO or otherwise break the law, fire them immediately. Don’t jeopardize your case by courting legal complications down the line.
2. THEY DON’T UNDERSTAND YOUR CASE
Perhaps your attorney simply doesn’t have the right background to understand your invention.
If you find you’re spending too much valuable time walking them through the technical details, you might be better off in the long run finding someone who needs less hand-holding.
3. THEY SEEM DISORGANIZED
A good lawyer should be able to keep your things organized. Be wary of anyone who constantly asks you to provide documents or information that you’ve already provided before.
Also, if your attorney has promised to meet certain deadlines, it’s not a good sign if they consistently fail to meet said deadlines — or worse still, miss deadlines with the USPTO.
Your attorney should request time extensions from the USPTO only when you ask them to, or when it’s in your case’s best interests.
4. THEY’RE UNRESPONSIVE
Your attorney should be actively communicating with you about the status of your case, which means they should respond to your emails and calls within a reasonable amount of time (typically 48 hours).
Your attorney should not be ignoring you — or making you work overtime to get the updates you need.
5. THEIR BILLING PRACTICES ARE SHADY
First of all, if your attorney makes a mistake (even unintentionally), they should not be charging you to fix it. For example, if you get a “missing parts” request from the USPTO because your attorney misplaced a document, you shouldn’t have to pay to resolve it.
Good attorneys are transparent about their fees. If your attorney seems evasive about how they’ve calculated your bill, that’s a red flag.
WHEN TO RECONSIDER FIRING YOUR PATENT ATTORNEY
Depending on your priorities and why you’re feeling dissatisfied, switching attorneys may not always be in your best interests.
1. THEY DIDN’T GET YOU THE RESULTS YOU WANTED
In any legal matter, including patent prosecution, there are no guarantees.
If you’re upset with a certain outcome, or with the pace of patent prosecution, you should first think hard about whether a different attorney could actually change what’s happening.
2. THE CIRCUMSTANCES AREN’T RIGHT
Depending on where you are in the patent process, it might not be the right time to change attorneys. Do you have the funds to manage this transition? If you have an upcoming filing deadline, will your new attorney have enough time to adequately prepare?
HOW TO SWITCH PATENT COUNSEL SMOOTHLY
Once you’ve considered the factors listed above, it’s up to you to make the final judgment call.
If you’ve decided to bite the bullet, here’s what to do next:
- Review the terms of your engagement with your previous attorney. Generally speaking, you may discharge a lawyer at any time, with or without cause, so long as you pay them for services rendered. What outstanding fees will you be responsible for paying?
- While you should inform your new attorney about any legitimate concerns, keep it professional. Legal circles tend to be small — especially in specialized fields like patent law — and you want to start off your new relationship on the right foot.
- Ask your new attorney about their onboarding process. What documents will they need? Who will be responsible for transferring old files from the previous attorney?
- Unless absolutely necessary, don’t cut ties with your erstwhile attorney until you’ve found a new attorney to work with. Patent prosecution is a time-sensitive affair, which makes it disadvantageous to have a gap in your patent process. In any case, you want to make sure you can actually find someone who can address the issues you were facing — or else you’ll just end up locked into a cycle of dissatisfaction.
- Negotiate with your new lawyer upfront: Will you be billed for the time they spend getting up to speed on your case? If so, what are their rates?
READY TO ENGAGE NEW PATENT COUNSEL? START HERE.
Convinced that you have legitimate concerns about your current patent counsel? We’re always interested in hearing from talented entrepreneurs who are ready to take their business to the next level.
To find out whether we’re the right fit for your needs, contact us now.
Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.