How to Find a Good Patent Attorney: A Comprehensive Guide

Key Takeaways:

• A good patent attorney should have technical expertise in your invention's field and experience in patent law.
• Conduct thorough research by checking USPTO databases, reading reviews, and requesting references.
• The initial consultation is crucial for assessing an attorney’s experience, communication style, and cost structure.
• Consider cost-saving measures such as defining the scope of work clearly, handling preliminary searches yourself, and getting written fee agreements.
• Understanding the patent process, including patentability searches and application drafting, helps you work effectively with your attorney.
• If an attorney fails to perform, the USPTO can take disciplinary action, but fee disputes are generally handled privately.
• Choosing a registered patent attorney ensures they are certified to practice before the USPTO.

Finding a good patent attorney or patent broker will take a bit of research and due diligence on your part.

How Do I Find a Good Patent Attorney?

When asking, “How to find a patent attorney,” consider the following. Professionals in the field of patents can be classified into two types: patent attorneys and patent brokers. Finding a good patent attorney or patent broker will take a bit of research and due diligence on your part. A patent lawyer is a lawyer who has decided to specialize in patent regulation.

A patent lawyer can also represent you in the courtroom. In comparison, a patent agent only deals with patents and logos. Each patent attorney and patent broker should be knowledgeable in a specific technical discipline, for example, mechanical or electrical engineering, chemistry, medicine, etc. Look at their years of experience in an area to gauge their competence and commitment to an area. Finding a competent representative in your area may be time-consuming initially, but remember that you'll likely be working with this person for at least a year, and maybe for the lifetime of your invention after it reaches the market.

In terms of background, a patent agent is a person that likes the challenges of patenting and has specialized in this field. Meanwhile, a patent lawyer normally first starts working in law and then decides to specialize in patent regulation. A broker and attorney may have worked as a patent examiner for the Patent Office previously. Many corporations have patent brokers and patent attorneys to put in writing patent functions for their own corporate research and inventors.

In deciding on a patent representative (lawyer or agent), first consider their technical specialty. When you've got a digital invention, it is best to have interaction with a patent agent or lawyer with an Electrical Engineering Diploma. If your invention is the standard gadget, it is best to work with a patent agent or lawyer that has a mechanical engineering background.

Keep in mind that patent searches must be completed by the skilled search specialist, not the agent or lawyer. Insist on getting a knowledgeable person to present a patentability opinion in writing. They will write a written opinion that states and evaluates the claims for your invention while also reviewing and mentioning applicable past related patents found in a search.

Of course, it is best to have a sense of integrity from your patent lawyer and feel that you're given unhurried solutions to your questions. If you feel pressured or unattended, you're probably not matched with the right person.

Be sure that the value per hour for specific tasks fit with your wants as an independent inventor. Attorneys, legal professionals, and brokers who work alone are normally less expensive than those in corporations and may actually give higher consideration to your invention than professionals who work primarily for firms. After gaining a shortlist of possible patent lawyers or patent brokers in your area, set up an initial interview. This is usually free and only costs your own time and effort.

What Is a Patent Attorney?

A patent attorney specializes in patents, just as you the inventor understand the scientific and technical details about your invention. The preparation of a patent utility and conducting proceedings with any patent office requires knowledge about patent regulations and guidelines and patent office practices and procedures. You definitely have to appropriately follow procedures to arrange your personal patent and file them in a timely manner. A patent lawyer needs to be knowledgeable to prevent and look out for any issues down the line. Although you might be granted a patent by filing on your own, it's probably likely that a patent lawyer will cover more items and issues that will adequately shield your invention.

Most inventors make use of a registered patent lawyer or patent agent. Deciding on an appropriate patent lawyer is a vital step in the development of your invention. Your patent will only be as good as the patent lawyer drafting it.

The Role of a Patent Attorney vs. a Patent Agent

A patent attorney and a patent agent both assist with patent applications, but there are key differences in their qualifications and services. Patent attorneys must pass the state bar exam in addition to the USPTO registration exam, which allows them to provide legal advice beyond just patent filings. They can represent clients in patent litigation and draft contracts, such as licensing agreements.

On the other hand, a patent agent is only required to pass the USPTO registration exam and can assist inventors with filing patent applications, conducting patent searches, and responding to USPTO office actions. While they cannot provide legal advice or represent clients in court, they are often more affordable than attorneys.

When deciding between the two, consider the scope of your needs. If you anticipate legal disputes, contracts, or broader intellectual property concerns, hiring a patent attorney is the best choice. However, for simple patent filings, a patent agent can be a cost-effective alternative.

Finding a Patent Lawyer

There are many approaches to finding a good patent lawyer. Intellectual property covers a large swath of issues, from leisure and media to contract and copyright regulation. Prior to deciding whether or not you wish to work with a lawyer who strictly deals with patents or one who can advise you on different related areas of intellectual property, you should first assess what you want. If you are promoting something predicated solely on creating, advertising and marketing, and promoting revolutionary merchandise, you can look for somebody specializing solely on patents and copyright.

However, if you or your organization also plan to put the product online or publish it, a lawyer who offers additional expertise and data expertise regulation can be very helpful. It is important that what you are promoting has been vetted by authorized counsel. It's advisable to evaluate whether or not they may be capable to obtain patents for you.

Questions to Ask a Patent Attorney Before Hiring

Before hiring a patent attorney, it’s essential to ask the right questions to ensure they are the right fit for your needs. Here are some key questions to consider:

1. What is your technical background?
   • Ensure the attorney understands your invention’s field, whether it’s software, engineering, biotechnology, or another industry.
2. How many patents have you successfully filed?
   • Experience matters. Ask about their track record with patents similar to yours.
3. What is your approach to conducting a patent search?
   • Understanding their methodology can help you gauge the thoroughness of their research.
4. How do you structure your fees?
   • Clarify whether they charge hourly, per project, or offer flat fees for specific services.
5. Who will be working on my patent application?
   • Some firms delegate work to junior attorneys or paralegals. Make sure you know who is handling your case.
6. How long does the patent process typically take?
   • While timelines can vary, experienced attorneys should provide an estimate based on past cases.
7. What challenges do you foresee with my invention’s patentability?
   • An honest attorney should inform you of potential obstacles upfront.

Asking these questions can help you select a competent and trustworthy patent attorney who aligns with your expectations.

Where Do I Find a Good Patent Lawyer?

There are many online sources to find a good patent lawyer today. First, search dependable websites such as UpCounsel, using the specific parameters you have set, along with your geographic location. Choose search parameters such as enterprise as the subject and scroll down to find intellectual property. Choose a subcategory to specify additional needs. After obtaining information on certified attorneys, do a Google search on every one of them. Search for clues to the patent lawyer's reputation, quotes to the press, previous clients, any agency reprimands, ratings from various websites, etc., to give you a better feel for their work.

The Importance of Checking Client Reviews and References

Finding a good patent attorney involves more than just verifying their credentials. Reading client reviews and checking references can provide insight into their reliability, communication skills, and effectiveness. Here’s how to do it:

• Google Reviews & Legal Directories:
  • Search for attorneys on platforms like Avvo, Martindale-Hubbell, or Google Reviews to see client feedback.
• USPTO Attorney Database:
  • Confirm the attorney is registered with the USPTO to ensure they are authorized to handle patent applications.
• Referrals from Other Inventors:
  • Networking with other inventors or joining inventor groups can lead to trustworthy recommendations.
• Request References:
  • Ask the attorney to provide past client references who can speak to their professionalism and results.

A patent attorney’s reputation is often a reflection of their success and client satisfaction, so conducting due diligence is essential before making a decision.

What Is an Initial Interview for a Patent Lawyer?

After you've narrowed down the list of possible patent lawyers, you can set up an appointment with them for an initial interview. Come ready with documents that describe your invention and other related data. It may be helpful to first write out an outline of your materials and key questions that you will ask. For example, you can ask how the lawyer will typically conduct a patent search, how many patents have they successfully filed, how long does it usually take, are they familiar with the technical area of your patent, and of course, what are standard and extra costs.

It is also advisable to get a reference from a financial institution. You can reach out to local banks or merchant banks. You can also ask the lawyer to provide a list of references that you can contact. Ask for a copy of the agency's retainer agreement and make sure that you understand it before agreeing to any work.

What Are Some Ways to Find Patent Attorneys or Patent Agents?

A good place to start, and one of the best methods to search for patent attorneys or patent brokers, is to get on the internet and go to the United States Patent & Trademark Office (USPTO). The USPTO lists patent attorneys and brokers by state. Within the USPTO website, look for "patent attorneys," and you will see a listing of states. Click on your state and you'll see a listing of patent attorneys and patent brokers by identity in alphabetical order. If the individual works for an agency, the agency is listed within the USPTO search. Within the USPTO lawyer search, the final line of every entry states "lawyer" or "agent."

Listings that point out "patenting providers" are sometimes departments inside less than ethical corporations that blast their deceptive commercials on TV. Patent professionals additionally promote in Inventors' Digest journal together with patent searchers, prototypes, and advertising and marketing specialists. Your native yellow-page listing lists patent attorneys, however, don't distinguish them from patent brokers. Beware on listings that point out "patenting providers," as these are sometimes corporations that hope to snare you and promote disreputable providers. In just a few hours, there are patent attorneys or brokers who provide poor quality patent services.

Look for an agency or individual to write your patent utility and for someone who does solely patent and trademark work. Also, make sure that you are able to visit their workplace for a free in-person preliminary interview. There may be an inventor's group in your area — join and ask for a suggestion for a neighborhood agent or lawyer. To find an inventor's group close to you, visit the United Inventors Affiliation (UIA). UIA is a nonprofit group devoted to serving inventors and inventor teams.

How Can I Keep Costs to a Minimum for a Patent Attorney?

Don't make the mistake of thinking that working with a patent attorney is going to be inexpensive. The fact is, professional services almost always come with a significant cost attached to them. That being said, there are some steps you can take to help keep your costs down while still getting the professional help you need. Here are just a few with more detailed explanations to follow:

• Keep in mind that your patent attorney works for you.
• Don't be afraid to ask for referrals while you're searching for a good patent attorney.
• Remember that patent laws are effective nationwide. With that in mind, you're going to want to avoid constraining your search to your own physical location.
• Consider the benefits and drawbacks associated with working with a large firm as opposed to an independent patent attorney.
• Keep in mind that, regardless of the attorney you hire, they're only going to be as useful as the information you give them.
• Everything needs to be in writing, from billing terms to expected services and deadlines. Never rely on a verbal agreement as a promise that something will happen. If it isn't documented, it didn't happen.
• Don't rely on your patent attorney as an excuse to not educate yourself. They may be the expert, but it will serve you well to learn as much about the legal process surrounding your patent efforts as you can.

You might be wondering why it's so important to remind yourself that your patent attorney is working for you and not the other way around. After all, that seems like a given. You are the one paying them, right? In reality, your patent attorney is going to know a lot more about what they're doing than you do, making it easy for both of you to forget who should be calling the shots. Yes, you need to take their advice into consideration and keep in mind that they're the experts. However, it's also important to set boundaries and expectations from the services you're going to receive from the patent attorney as early in your relationship as possible. It might also be a good idea to put those expectations in writing so you both have something to refer to down the road.

Doing your own preliminary research and legwork will set proper boundaries and expectations early in the process of working with a patent lawyer, which will keep your costs to a minimum. If you are going to be working carefully together with your lawyer for a prolonged time period, don't shortcut on the time upfront. Contemplate first studying different patents in your product class and contacting the authors. Having a lawyer that's accustomed to your expertise is a plus, however, it's not an absolute necessity. If your invention is in an extremely specialized subject, like software programming or medical devices, for example, then you might want to invest the time to find a patent attorney that is familiar with your subject area. If your concept is straightforward, then a very good patent lawyer ought to have the experience and background to get the job done.

With bigger corporations, you will begin by working with a seasoned senior affiliate or associate; however, she or he will quickly delegate your case to a different lawyer with much less expertise. The senior lawyer from a big agency will oversee and handle the process, but your project will not be their primary work. Patent regulation can be very specialized; you may find yourself having to work with a couple of lawyers to get everything you need to be done. To work successfully with a lawyer, know your invention inside and out — research prior patents yourself — and realize the distinction between them and your own innovation. Do not take a passive position and assume your lawyer is going to dive deep for you.

Ship your lawyer a prototype if that is possible. This will certainly help them to understand what the patent is about. At all times, learn every part your patent lawyer writes in your patent utility and ensure you understand and agree with what they've written. If you feel that your patent lawyer has overcharged, bring this up immediately and discuss any alternatives. Ask them to be specific about their tasks and hourly billing. You may want to document your conversations together with your patent lawyer. Doing this provides you with reference materials if disagreements or things come up that are unclear. You may find that listing your questions out in an email is a more cost-effective way to interact with your lawyer rather than a phone conversation. Remember, if you ramble on and on, the lawyer is still going to bill you per the hourly rate in 15-minute increments.

Strategies to Reduce Patent Attorney Costs

Patent attorneys can be expensive, but there are strategies to minimize costs without sacrificing quality:

1. Conduct a Preliminary Patent Search Yourself:
   • Use Google Patents or the USPTO Patent Database to check for similar inventions before hiring an attorney.
2. Organize Your Documentation:
   • Provide clear descriptions, technical drawings, and any prior research to avoid unnecessary attorney time.
3. Define the Scope of Work in Advance:
   • Clarify whether you need a full patent application, just a patentability opinion, or help with responding to office actions.
4. Choose a Patent Agent for Basic Filings:
   • If your needs are straightforward, a patent agent can be a cost-effective alternative.
5. Negotiate Fixed Fees:
   • Some attorneys offer flat-rate pricing for certain services instead of hourly billing.
6. Use Email Instead of Phone Calls:
   • Since attorneys often bill by time increments, asking detailed questions via email can be more cost-efficient.

By following these steps, you can keep legal expenses under control while still getting expert guidance on your patent application.

What Should You Do Once You've Hired a Patent Attorney?

One of the first steps you're going to want to take after you select and hire your patent attorney is to execute either a power of attorney or an authorization of agent. This should be submitted to the patent office, along with the rest of your patent application paperwork. Once your patent attorney has been appointed as your representative, it's important to understand that the USPTO will no longer communicate directly with you. Instead, they will direct all communication to your patent attorney.

This doesn't mean you can't still contact the patent office directly if you need to ask questions about your patent application, though. You also retain the right to revoke power of attorney status from your patent attorney if you choose to do so. However, this should only be done if you choose to fire your current attorney and hire another.

The United States Patent and Trademark Office will register patent attorneys, as well as people who aren't law professionals. When a nonattorney is registered with the USPTO, they are referred to as a patent agent. Although patent agents aren't technically lawyers, they are typically just as qualified in their field as a patent attorney. The main difference between a patent attorney and a patent agent is that patent agents aren't able to conduct litigation in court or offer services that local authorities would consider to fall in the realm of practicing law.

For example, patent agents are not able to draft contracts related to patents, such as assignments or licenses, in the state that they live or work in.

What Happens If My Agent or Attorney Fails to Perform?

The USPTO retains the authority to disbar or suspend any patent attorney or agent that is found to be guilty of actions that can be considered gross misconduct. However, this will only ever happen after a thorough hearing has been conducted and undisputed evidence to support any claims of misconduct exists. When the USPTO receives a complaint, they will investigate and act accordingly based upon the evidence and information available.

Keep in mind that the USPTO does not oversee or regulate fees charged by patent attorneys and patent agents. While it is possible for the USPTO to take action against a patent professional in the event that evidence of overcharging is presented, they will sometimes intervene on your behalf. However, it is a rare occurrence for this to happen as there needs to be sufficient evidence that you have been overcharged for the services in question.

How to Handle Patent Attorney Disputes

If you encounter issues with your patent attorney, there are steps you can take to resolve the situation:

1. Address the Issue Directly:
   • Communicate your concerns and ask for clarification or adjustments to the service.
2. Request a Breakdown of Fees:
   • If you suspect overbilling, ask for a detailed invoice outlining the work performed.
3. Seek Mediation or Arbitration:
   • Many state bar associations offer fee dispute resolution services to mediate conflicts.
4. File a Complaint with the USPTO:
   • If an attorney engages in serious misconduct, you can report them to the USPTO Office of Enrollment and Discipline.
5. Consider Switching Attorneys:
   • If the issue persists, you may need to hire a new patent attorney to take over your case.

Understanding your rights as a client ensures you receive fair and ethical legal representation throughout the patenting process.

Why Should I Choose a Registered Patent Attorney?

In the U.S., the USPTO enforces the regulations and laws governing any patent lawyer or patent agent. A patent lawyer not acknowledged by the USPTO will not be permitted by regulation to represent inventors to the USPTO. The office maintains a register of patent attorneys and brokers that are available at the USPTO website. To be admitted to the USPTO register, a patent lawyer or agent needs to adhere to all USPTO regulations. A USPTO registered patent lawyer should offer ethical services and be competent in all relevant areas of the law, with specific scientific and technical areas as they relate to patents.

Frequently Asked Questions

1. How do I know if I need a patent attorney or a patent agent?
   A patent attorney can handle both patent applications and legal disputes, while a patent agent is limited to patent filings and responses to the USPTO.
2. How much does it cost to hire a patent attorney?
   Costs vary, but expect to pay $5,000–$15,000 for a full patent application. Some attorneys offer flat-fee pricing for specific services.
3. How long does it take to get a patent?
   The patent process typically takes 12 to 36 months, depending on the complexity of the invention and USPTO backlog.
4. Can I file a patent myself without an attorney?
   Yes, but working with an attorney increases the likelihood of a strong, enforceable patent with properly drafted claims.
5. What should I do if I can’t afford a patent attorney?
   Consider filing a provisional patent application yourself and later hiring an attorney for the full application when funding is available.

Move forward in your quest to find a patent attorney. Lawyers are available by posting your legal need on UpCounsel's marketplace. UpCounsel provides a platform for individuals and small businesses to get the legal help they need at an affordable price. Lawyers are recruited from top Ivy League law schools and have on average more than 14 years of legal experience, including work with or on behalf of companies like Google.