A tech company’s relationship with a patent law firm is often a long-term one. That’s why it’s important to do your due diligence to ensure you’re hiring the right attorney for your intellectual property needs.
Most patent attorneys specialize in either patent prosecution (the process of obtaining patent rights for inventions) or patent litigation (handling legal disputes about whether someone is infringing an existing patent).
If you’re looking for advice about protecting your own company’s inventions, look for a firm (or a group within a firm) that specializes in patent prosecution — which is what we’ll discuss in this post.
At minimum, your patent attorney should advise you on:
- Costs, benefits, risks, and advantages of filing patent applications
- Options for protecting your invention in the United States and foreign countries (whether you should consider provisional applications, PCT applications, and so on)
But you’ll need to dive a lot deeper to find out whether this will be an effective partnership in the long run. The following 22 questions will help you gather all the information you need before making a hiring decision.
A law firm’s website might advertise intellectual-property services — but that doesn’t always mean that they have actual experience advising tech companies, or with successfully prosecuting cases before the U.S. Patent and Trademark Office (USPTO).
Look for a patent attorney who has significant experience handling patent filings. Here are some guiding questions to find out about their experience.
- Are you licensed to practice before the USPTO? (You can use the USPTO’s website to double-check this.)
- Are you in good standing with the USPTO and the state bar association (i.e., have not been disbarred or formally disciplined)?
- Do you specialize in patent prosecution and/or patent litigation?
- How many patent applications do you typically file per year?
- How do you define success in handling a patent application? What has been your success rate?
- How have your clients benefited from your work? (Have they been able to license or enforce the patents you’ve drafted? Have they been able to raise funding, sell their portfolio, or be acquired?)
- Do you have experience filing in international jurisdictions?
In order to pass the patent bar, an attorney must possess a degree of technical experience, as demonstrated by holding at least a bachelor’s degree in a technical field or some equivalent.
But not everyone has the same technical background. You want an attorney who understands the technology you’re developing. For example, if your invention deals with nanotechnology, a lawyer with a background in biology may not be your best bet.
The following questions will help you to assess your attorney’s technical qualifications.
- What fields of technology do you have experience with as a patent attorney?
- What degrees or other qualifications do you have that establish your skill in the field?
- What fields of technology do you have experience with from other work? (As an example: Did you do any work as an engineer or scientist before you became a patent attorney?)
You’ll need to work closely with your attorney through the process of obtaining a patent — so be sure you can work well with them.
It’s also important to understand who you’ll be working with. At small firms like Henry Patent Law Firm, the attorney you speak with during the hiring process will likely also write your application. But if you’re choosing a large firm, a variety of associates may work on your case, which makes it even more important for you to know the rest of the team.
Here are a few questions to help you find out more about your firm’s work style.
- Do you typically represent large corporations, universities, startups, independent inventors — or a mix of all of the above?
- Who in your firm would be working on my account? (If it includes junior attorneys or paralegals, can you speak to their level of experience?)
- What process will you follow when filing my patent application? How much time will the inventors need to spend on the process?
- How frequently do you meet with clients?
- What obstacles do you anticipate for my case?
- Do you have any conflicts of interest at this time, and/or do you foresee any arising in the future?
While strong patent counsel can get expensive, hiring an attorney is also an investment in your IP assets. As such, tech companies should build this into their annual budget.
That said, you also don’t want a rude awakening when you see your invoice. Pick an attorney who’s transparent about their billing policy, and will give you upfront estimates of the costs you can expect to incur.
Be wary of patent attorneys who charge very low fees! The cost savings might tempt you, but it’s typically a red flag for an attorney who’s inexperienced or can’t retain clients. Instead, look for someone who offers solid services at competitive rates.
In addition, it’s important for you to be upfront about your budget so that your attorney can tailor their recommendations to your needs.
- What’s your billing model — hourly or flat fee; demand or project billing? If you bill hourly, what’s your hourly rate? What increments of time do you bill in, if any?
- Do you charge your clients for brief phone calls or short emails?
- Can you provide a per-project cost estimate (patent searches, filing a provisional patent application, etc.)?
- Can you provide an estimate of the overall cost of filing a non-provisional patent application?
- If applicable, can you provide an estimate for filing internationally?
It’s always beneficial to speak with businesses like yours who have worked with the patent attorney before.
Some attorneys will be understandably hesitant to reveal their clients’ names. But even if confidentiality is at stake, the way they respond to a request for references can reveal a lot about their working style — and you want to work with somebody who is honest and upfront in their communications.
So you should never hesitate to ask for references.
- Do you have any references I could contact to ask about their experience working with you?
HIRING THE RIGHT PATENT ATTORNEY FOR YOUR BUSINESS
Don’t be afraid to get all the information you need before committing to a hiring decision. Your money, business, and IP assets are at stake in forming this long-term working relationship.
Looking for an attorney who specializes in patent prosecution? Contact Henry Patent Law to find out whether we’re a good fit for your needs!
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.