How To Find, Evaluate and Hire The Right Patent Attorney
Do you need a patent attorney?
Soon after realizing that it would be wise to obtain a patent for a new invention, most inventors wonder if they can just file the patent themselves. The answer is yes! There is no patent office in the world that requires a specifically trained and qualified legal professional, such as a patent attorney, to be the one who creates and files a patent application. In fact, many patents have been granted to inventors who successfully navigated the patent process themselves. However, these instances have become exceedingly rare these days due to the fact that the application and prosecution process for seeking a patent is incredibly complex and wrought with specific and somewhat arbitrary requirements. Working with a trained, skilled and experienced patent attorney has become paramount to the success of a patent application and most inventors have found that the costs associated with hiring a patent attorney is more than worth the time and resources saved.
What are the chances you can get a patent awarded when applying by yourself vs working with a patent attorney?
It is estimated that only about 10% of applications created and filed by non-patent attorneys are ever awarded patents. Whereas, closer to 90% of applications that are written and submitted by trained and experienced patent attorneys are awarded.
A huge part of this is that the rules for patent prosecution are incredibly arcane. Many people who file their own applications run into formatting issues where they do not put forth the types of documents and present information in the way that the USPTO wants. There are many specific rules for both the written descriptions and the drawings and failure to precisely follow these is why many people have trouble getting their applications accepted in the first place.
Another hurdle is knowing what you need to submit at different times of the application process to get a complete application. With the USPTO you must have a specification, a claim, pay the right fees and include the proper filing forms. Failure to follow these procedures correctly the first time will end up costing additional money and time. Worst of all, the additional time delay can allow another person to file an application for the same invention and end up costing an inventor their intellectual property rights entirely.
If you are serious about the success of a patent application and you feel that an invention has real value, you simply cannot afford to not work with a qualified patent attorney.
What qualifications should you seek in a good intellectual property attorney?
A good patent attorney should be qualified to practice, demonstrate excellent communication skills, have lots of patent experience and an excellent track record of successful patent awards. However, simply because someone is a good patent attorney does not necessarily mean that they are the right patent attorney for your specific project. Due to the nature of patent application creation, the right patent attorney for your project should be someone who has some depth of experience relevant to the field of technology surrounding your patent.
If you are seeking a software or mobile app patent, you should find someone who understands code and successfully executed software patents. If you have a medical device or procedure, you should seek to work with someone who has experience with medical devices and procedures. If you have a consumer packaged good or manufacturing process, you should seek someone with experience in manufacturing, etc… The benefit of working with Genius Patent is that we are able to bring together a diverse team with experience in virtually every industry and deliver relevant expertise. If not, we will simply refer you to a firm that has the specific qualifications you need.
What separates a good IP attorney from bad patent attorneys?
Patent attorney’s must be able to convey ideas. Therefore the ability to quickly understand a new concept and concisely describe it in terms that will provide the necessary legal coverage is critically important. However, a big part of an application is also being able to either draw figures or work with the drafts that represent what the invention is and what it does in a way that is broad enough to provide maximum coverage, yet narrow enough to get approved by the patent office.
Another big area where many attorneys fall short, is in understanding as a practical matter, where the invention is at in its lifecycle and the challenges it faces now and will face in the future. It is one thing to understand patent law, it is quite another to understand a business and the market that business will be trying to reach. These are often critical components of truly understanding an invention. This is the single biggest problem that patents face when they reach the stage where they must be defended in court. The patent was approved, however, due to some technical details the application did not adequately cover some business, use case or other pertinent scenario simply because the patent attorney didn’t fully understand the real world implications.
A good patent attorney is one who has the skills and experience to really understand how to cross over from the conceptual to the practical and see the uses and challenges the invention will face in the real world.
What should you expect from working with a patent attorney?
You should expect for a patent attorney to be extremely diligent in getting to know your invention, your business and your market. Your patent attorney either currently be or be able to quickly become an expert in your niche. Your patent attorney should be able to help you understand who potential competitors are and what similar patents currently exist. You patent attorney should be able to help you understand what each step of the process will be, what challenges you may face, how long the process should take and what costs you should expect to incur along the way. You should definitely expect your patent attorney to be in good standing and have numerous references that are willing to give you a thumbs up based on their own personal experience.
How to conduct a patent attorney search.
It seems that you have already conducted a very successful patent attorney search because you are in the right place and reading this right now!
But seriously, the most common type of patent attorney search is to seek referrals from the entrepreneurial community. You can’t just put your faith in a law firm because you found them on Google. When you find a patent attorney that you think may be capable of securing your patent, figure out their pricing right away. Some patent attorneys charge tens of thousands of dollars and do not deliver anything more than less expensive attorneys can provide. If they are within your budget, next check their qualifications, background, experience, reviews, testimonials and references. Do your due diligence and when you feel satisfied, pull the trigger. Remember, the United States (like most countries in the world) is now a “first to file” country when it comes to patents and the clock is ticking!