[How To] Pick A Good Patent Lawyer

28 October 2012 Start-Up

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So you got an idea that is better than sliced bread.  And now you want to patent it.  But as an entrepreneur, you know nothing about how to file for an invention, let alone the patent process.  Fortunately, here are some tips from experts on finding a good patent attorney.

Do You Like The Lawyer?

This may sound trivial but the entrepreneur will be spending a lot of time with the patent lawyer so you need to find someone you enjoy spending time with, suggests Thomas Galvani of Galvani Legal.

“You should pick an attorney who [is] up front and can answer all your questions, whether they have favorable answers or not”, he says.

Some of the questions you should ask are:

  • How does the patent process works?
  • Does the invention represent subject matter eligible for patent protection?
  • What technology areas do you work in?

The initial meeting is like an interview where the entrepreneur can feel out the attorney.  Though he’s hasn’t turned down or fired a client for interpersonal reasons, Thomas says he has had to decline representation because of conflicts before.  This can happen for a variety of reasons, such as if the attorney has represented someone in the past with a similar invention.

Entrepreneurs can rest assure however that there are guidelines in place which prevent lawyers from leaving them in the lurch. One example is if a filing is due in a couple of days, the lawyer can’t fire the client as there isn’t enough time for the entrepreneur to find another attorney.

What Has The Attorney Done And Is Currently Doing?

Aside from interpersonal details, Jim Angleton, the president for Aegis FinServ Corp suggests looking at the attorney’s rating on Martindale Hubbard. The things to look for are schooling, ranking, years of experience and how many successful patents, trademarks, service marks that have been applied and granted.

“An entrepreneur also needs to make sure that the lawyer has no other clients that may pose as a conflict of interest”, says Ian Aronovich, the president of GovernmentAuctions.org, a site that compiles and provides information about government auctions of seized and surplus merchandise from all over the country.

Asking Lots Of Questions

This is not the entrepreneur asking lots of questions, though the entrepreneur certainly should. But look for an attorney who asks questions as well. What kind of questions?

“Questions about the entrepreneur’s plans and goals for its technology and company as well as questions about the competitive landscape”, says Mark J. Rosenberg of Tarter Krinsky & Drogin LLP.

“These questions can make the difference between a narrow patent that competitors can easily design around or can invalidate and a rock solid patent that is a real asset. Also, look for a patent attorney who litigates patent infringement cases. Litigation experience gives the attorney a broader depth of knowledge of a patent’s potential vulnerabilities and how to best avoid them”, he says.

Getting A Good Graphic Artist

“Be sure your patent attorney works with a graphic designer to do the patent drawings. These are highly standardized drawings, that if done well, will only expedite the process at the patent office”, says David Ciccarelli, CEO of Voices.com, the industry leading website that connects businesses with professional voice talents.

It’s fair to say these graphic artists are not your typical hire from oDesk or eLance. Attorneys can usually refer draftsman to create the drawings.

David notes one instance in which a direct competitor had their filing rejected because screenshots were submitted instead of the standardized drawings.

Cost Structure

There are two costs associated with a patent. There’s the initial filing cost and post-filing cost. “After the patent is filed, there is usually quite a bit of back-and-forth between the attorney and the USPTO, and if that is not included in the initial price, you could be hit with a very large bill in the year or two after the initial filing”, says Kameron Kramer of Albuquerque Business Law, P.C.

The initial filing could take up to a year and half before a response from the US Patent and Trademark Office. Most likely, it will be a rejection, or an office action. The attorney has 6 months to respond which is arguing with the patent examiner back and forth until patent is allowed to issue. During this time, there may be amending and canceling claims, adding drawings, or even splitting the original patent into multiple ones.

Kameron notes that the initial fees usually do not cover the office actions because that is unknown. The entrepreneur therefore should be aware of more costs after the initial filing.

“I, and I think a lot of other attorneys, like to look at the office action and then quote a flat fee to respond”, says Kameron.

So what’s the best way to start your search for a patent lawyer? David of Voices.com suggests referrals from either a local chapter of association or technology hubs.

Did you find this article helpful? Do you have other tips in finding a good patent attorney? Share in the comments below.

[img source]: Tiago Daniel

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Chief Community Officer at TeenBusinessForum. I believe that successful and ethical entrepreneurs make the world a better place. To make that a reality, I help empower those that will be the next generation of business leaders.


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