Looking for questions to ask a patent attorney? You know you need to hire a lawyer, but you may be wondering how to choose the right one. No exclusive list of questions exists. However, you should ask specific questions, which you would before engaging an attorney, and then ask other questions that are particular to patent attorneys. Being prepared and doing your due diligence when interviewing attorneys will help you not only understand the process but will also help you develop a professional relationship with a future legal professional.

Questions Particular to Patent Attorneys

  • Do you have technical experience or technical background, such as software, life science, or mechanical engineering?
  • Who is your typical client? Do you represent small and large businesses? Do you work with start-ups? Do you work with individual inventors?
  • Are you board certified in intellectual property by your state bar?
  • Do you provide extranet or portal access to my case, such as billing, documents, and deadlines?
  • Have any of your patent or trademark applications been subject to litigation?
  • Do you practice internationally (e.g., do you help protect patents in other countries)?
  • Are you registered with the U.S. Patent & Trademark Office?
  • Do you offer services in obtaining patent prosecution (e.g., securing patent rights for inventions) and patent litigation (e.g., handling potential infringement of a patent through litigation)?
  • What are the benefits and risks of filing for a patent?

To get more ideas for questions, research what a patent lawyer does.

Questions to Ask in General

  • Is your firm highly rated, such as receiving an AV-Rating with Martindale-Hubble?
  • Do you have any teaching or seminar experience?
  • How do you provide value to your clients? For example, this may include expertise, communication, and billing structures.
  • Do you have a conflict of interest in taking my case?

Some Things to Consider When Interviewing Patent Attorneys

  • A confidentiality agreement is not needed. Federal law requires that patent attorneys and agents keep all information and material related to clients' (or prospective clients') inventions confidential. These federal requirements are more stringent than a confidentiality agreement would be.
  • Keep in mind that the patent attorney is there to help you. Communicating about your invention to the attorney will help them advise and represent you. You know your invention best. Help your attorney understand what you know through explanations, line drawings, or photography.
  • Be sure to budget your legal expenses. You are hiring a patent attorney as an experienced, professional service. Talk to the patent attorney about how they charge. Most patent attorneys do not charge on a contingency basis. You may be tempted to ask for a bulk discount (if you have several inventions) or if your attorney wants to go in on your project as a partner. Be careful here. Although fees can be structured for large amounts of work, large amounts of work must exist. Additionally, proposing that the attorney join you as a business partner is probably going to end in a short meeting.
  • Talk to several lawyers. Compare services, expertise, and billing. Don't just shop for the lowest price. Most experienced patent attorneys understand the general scope of projects or processes. By knowing this, they can often give you an idea of their costs associated with your project.
  • Be realistic. Understand that you are thinking about hiring a patent attorney so that you don't have to complete this process yourself. Understand the process with your attorney. Have realistic expectations for your invention.

Patent law is complicated, so complete your due diligence when talking to a patent attorney. If you want to protect your inventions, whether it's through obtaining patent rights or defending against a possible infringement, you want a long-term relationship with a skilled professional. Asking the right questions will help you in this due diligence while also helping you to create a solid professional relationship.

If you need help with a patent, you can post your legal need on UpCounsel's marketplace to find a competent attorney to assist you. UpCounsel only accepts 5 percent of the attorneys who apply to the platform, so you can be assured that your business and your invention will receive top-tier legal help from professionals from the country's best law schools.