Originally Posted on 11/8/05
Below is an updated version of an article I had published about a year and a half ago at www.Troubleshooter.com. For those who have not read the original enjoy.
And in one of my future posts, I will offer some additional pointers on choosing a good patent attorney. Unfortunately, I have found that after leaving the big firm environment and working primarily with small companies and individual inventors that a significant portion of the practictioners who work with individuals do not provide a work product that I consider satisfactory.
So here is the updated article:
In this article, I will answer the question: How does one choose a good patent attorney who will draft a patent application that is more likely to issue into a good patent? Unfortunately, the question does not have a simple and easy answer, but I can provide you with a several pointers.
First, since even a high quality patent application for very simple invention takes about 18 hours to draft and file, be very wary of an attorney who quotes you a price that indicates he will prepare the application in less time. To figure how long an attorney will probably spend on your application divide the attorney’s quote by his hourly rate. Remember that the claims, the most important part of the application, are the most likely to suffer if the attorney does not spend enough time writing the application. A general rule of thumb is to avoid attorneys who say they can draft your application for less than $3300.
On the other end, you probably want to avoid very high priced large firm attorneys. They are usually very good, but they bill at extremely high rates ($250-$420 an hour). A significant part of the premium goes to funding overhead services that a small company or independent inventor will probably not utilize. Another significant portion of the premium goes into the law firm partners’ pockets as profit. Additionally, the large firm lawyers are not likely to give you very much personnel attention, as their primary focus tends to be on their large corporate clients. I speak from experience: until relatively recently, I was a large firm patent attorney. One of the reasons I left was so that I could work with more small companies and individual inventors. Many patent attorneys at the large firms recognize that working with individual inventors is not a good fit and they will refer you to good solo or small firm practitioners. I regularly receive referrals from my former colleagues. Ultimately, if you are going to error on one side or the other, I recommend you error in hiring a large firm attorney over a low cost provider.
You should also avoid invention promotion companies or anyone that works with them including attorneys. In my opinion, the primary purpose of the invention promotion companies is to part you from your money and not to help you maximize the potential of your invention. By Federal law these companies must provide you with certain information concerning their success at helping inventors before they can accept your money. This information is almost always provided in small print since their success rates are either zero or extremely small. If you are interested, get some information from one or more of these companies and read their promotional materials, and you might be surprised that they really don’t offer to do much of anything for you in terms of commercializing your invention. But be careful when contacting them, because if you give them a phone number, they may call you several times to express great interest in your product and encourage you to proceed. Usually, the first step with these companies is to prepare what some of them call a “patent portfolio”. In my opinion, the “patent portfolio” is essentially useless. The portfolio typically contains SIC codes for your invention, a drawing of your invention, a rather generic market study and a preliminary patent search. I have seen a couple of these “preliminary patent searches” and it seems to me that what they really mean when that add the term “preliminary” to the phrase “patent search” is “worthless”. Now, given the questionable practices of these companies, why would an inventor ever use an attorney they recommend? Always remember that any attorney you hire is obligated to work on your behalf and to your benefit. However, I strongly suspect a patent attorney with a symbiotic relationship with an invention promotion firm probably has a greater loyalty to the invention promotion firm than his/her clients.
So what specifically should the individual inventor or entrepreneurial company look for when hiring a patent attorney? Look to patent attorneys that are either solo practitioners or are affiliated with a small firm. You should expect hourly billing rates between $175 and about $250 an hour. A good place to identify these attorneys is by contacting local inventor or entrepreneur support organizations in your area. Suitable patent attorneys may be members of such organizations, and if not, the members can probably point you to patent attorneys they have used. And, of course, you should always consult the Troubleshooter Referral list.
Once you have identified one or more patent attorneys, you should meet with or have a phone conversation with him (or her). Ask the attorney about the potential breadth of protection you can receive for your invention. Quiz him/her on how easy it would be for someone to copy your invention by making insubstantial changes to the invention. And here is a big one: gauge whether he/she truly understands your inventdoesn’tand if he doesn’t after you have made a reasonable effort to explain it to him, move on. Ask him/her about the total cost to get a patent. Does he hem or haw? Typically, the cost to get a patent to issue is about as much as the cost to file the patent application in the first place. Ask him/her about Office Actions and whether he thinks most of your claims will be rejected by the patent office initially. The answer typically should be “probably” or “yes”, because the Patent Office does not like to grant broad claims before the patent attorney clearly distinguishes them over the prior art by filing an Office Action response. In other words, if you attorney thinks the claims will not be rejected the first go around, they are probably too narrow and would not provide you with sufficient protection against infringers.
In the end, you have to gauge whether the responses to your questions are satisfactory. Believe me, if you go to a few attorneys, you will get an idea of who is likely to provide the best service and highest quality and who is just after your money. And perhaps the most important word of advice: if you are not comfortable with an attorney after you have interviewed, don’t use him. In the end, if you choose wisely, you will have a much better chance of ending up with a valid, enforceable and sufficiently broad patent that will prevent others from making, using or selling your invention. After that, it is your job to market your invention with or without the help of a reputable marketing company and see where your endeavor may lead.
As an entrepreneur who has invented products and formed a company to manufacture and sell those products, the most important advice I can offer is to have fun and enjoy the process of bringing your invention to fruition. After all, life is the journey and not the end result. Good Luck!
