By Kurt Leyendecker
Choosing a lawyer for any legal issue is challenging. You may have little or no experience about your particular legal issue and you may not know how to discern a good lawyer from a bad lawyer. You may be concerned (and even fearful) of the potential cost of hiring legal representation. You may be intimidated by lawyers and concerned that one may coerce you into a course of action that you do not want or desire. All these concerns are valid and deserve consideration before retaining an attorney.
When it comes to choosing a patent lawyer, however, there is an additional consideration that does not come into play when choosing a lawyer to handle most other legal issues: whether to retain a local patent lawyer or a remote patent lawyer. Unlike most attorneys who can only practice in the state in which they are registered, patent attorneys are federally registered by the United States Patent Office, and because of this, registration they can practice in any state.
The nature of patent law makes remote representation relatively easy. Documents and video can be shared over the internet, and telephone calls and video conferences can be used to discuss a particular invention. Nevertheless, local representation, and in particular sitting down in person with your patent lawyer, still has advantages. It is much easier to describe an invention when both you and your attorney can see and even touch a prototype, review sketches and drawings together, and perform internet searches while viewing a common screen.
Remote conferencing and video calls have improved tremendously over the last decade, but there is something lost, perhaps a level of mutual understanding that is hard to describe, when compared to an in person meeting. This pertains to both the invention itself and the goals and desires of an inventor or business owner in seeking patent protection. I am constantly surprised at the things I learn in an in-person meeting that would be lost over the phone or during a video call. These things can pertain directly to the invention but more often than not pertain to the inventor’s desires and aspirations that when I know them allow me to tailor my representation accordingly for the greater benefit of the client.
Many inventors and entrepreneurs choose remote patent lawyers for one of two reasons: cost, and experience or skill. Concerning cost, some online patent mills do offer legal services at a significantly lower price than more personalized representation. But saving a few dollars at a firm that minimizes attorney/client contact for the sake of efficiency and expediency can cost much more down the line in lost opportunities. Patent mills as their name suggests are most interested in getting you a patent than getting you a patent that serves your needs and is matched to your aspirations and goals. Suffice it to say, it is far easier to draft and prosecute a patent application when the intentions of the inventor are not substantially factored in, BUT without knowing the inventor’s intentions as to the invention and its future patent, the resulting patent may not serve those intentions. Which is really more cost effective: saving a little but obtaining an end product that is not very useful, or spending a little more and getting a product that helps facilitate those intentions?
The foregoing assumes, often wrongly, that the impersonal patent mill is always less expensive than an attentive local patent attorney. On the front end, I have advised hundreds of clients over the years not to proceed, or think long and hard before proceeding, with an expensive patent application. This saved them thousands of dollars and potential frustration over a period of years pursuing an invention that was either not patentable or one in which the scope of the potential protection was exceedingly narrow as to not justify the pursuit of the patent. If those same clients had gone to a patent mill, the attorney might never have advised his/her clients other than to say their invention was potentially patentable, and the clients would have spent a lot of money needlessly.
Having a patent attorney that understands the inventors goals and desires for the patent can also be helpful in negotiating allowance of the application after it is filed. A low cost provider may make largely rote legal arguments and offer narrowing amendments that hinder the resulting patent’s intended use or purpose when trying to overcome a patent office rejection of an application. In sharp contrast, the informed attorney can offer amendments a patent mill layer would never consider, thereby more quickly and less expensively moving the application to allowance and issuance as a patent.
Admittedly, there are remote attorneys that endeavor to fully understand their client’s invention, but they will typically not be any less expensive than a local patent lawyer. While one might also suggest that patent lawyers located remotely in large cities are more skilled than those in smaller cities, but this is largely untrue. As long as your metropolitan area is reasonably large, such as Denver, the skill level of the patent lawyers will be generally comparable to those in the bigger cities. However, a Denver attorney for the same skill level will be significantly less costly than a New York or Washington DC lawyer. But even if a great attorney can be retained who is remote, you still run the risk of losing the intangible benefits discussed above of having local counsel largely negating any small advantage the perceived superior skill level the remote patent attorney might possess.
Not everyone is located in a larger city and remote representation is necessary. I have numerous clients that are not located locally, although many of them became clients when they were local or were referred to me by a local client. Suffice to say, you may not have an option, but if you do, or a suitable larger city with a good population of patent lawyers is located within a couple/few hours’ drive consider making the trek at least once: it will likely be worth it in the long run.
