Choosing a patent attorney
Patent lawyers are one of the most highly paid types of lawyer. Unfortunately, there is no Yelp! for lawyers. It's difficult to know who to choose.
When you are choosing the patent attorney to work with, some things matter and some don't.
What matters
Patent attorney is a credential. So is patent agent. Either can have the power of an attorney to apply for patents. Everything on this page applies equally to patent attorneys and patent agents. I will use the word attorney for convenience.
To get patents that meet your business needs, competence is more important than credentials. Anybody with the right knowledge can write your patent no matter where in the world they are or what credential they have (or don't have). A patent attorney needs two kinds of knowledge: technological and legal. Don't rely on business advice from a patent attorney.
Good patent attorneys are quick at studying unfamiliar technologies so that they can ask inventors knowledgeable questions. You know your tech, so you can tell if a patent attorney understands it well enough. However, startup founders, CEOs, and CTOs usually cannot tell whether a patent attorney is legally competent or just good at faking it. Here are the questions you can ask a US patent attorney or agent to see if they know their stuff.
1. Should I search for prior art?
If the patent attorney tells you about "inequitable conduct" or "treble damages", that's a yellow flag. It's okay if they also mention "estoppel" and "extra office actions" and the resulting extra attorney's fees. If not, that's a red flag. They don't understand the scale of different risks, and their advice will harm your patent value and cost you extra money to their benefit. Walk away from any attorney who tries to persuade you to avoid prior art.
2. I have multiple inventions written and ready to patent. How can you file them quickly?
There is no limit on how many inventive ideas can be in a patent specification or how closely they must be related. Some attorneys recommend filing multiple applications, each with one idea and pay for them all to be handled in parallel. However, it is also possible to put everything into one spec and file one application, then file sequential applications in the future all with the benefit of the early date. That can stretch out the costs for years until the company has more capital and revenue. A good attorney will tell you about that option.
3. I want patent coverage in the US and UK. Can I work with a UK attorney first?
The US attorney will probably tell you about "foreign filing licenses". No problem. Those are easy to get. But if they try too hard to dream up other reasons why you must work with a US attorney first, beware. It doesn't have to be a US attorney first for you to get US patent coverage. You can often get better quality work at a lower price in other countries.
4. What are URLs for 5+ recently published US patent applications that you wrote?
Look at the claims. US patent claims should only use two words of legalese, "comprising" and "wherein". You should be able to read the sample claims and understand what the invention does. If the claims are difficult to understand, the patent is weak. You want to hire a patent attorney who writes claims that are easy to understand. The Detailed Description section of the patent should also be clear and free of legalese, except for the last few paragraphs.
5. Notice the words that the patent attorney uses in your conversation.
If a patent attorney talks about "rejection", "allowance", and "examiner", they probably know how to get patents. However, getting bad patents is easy. If the attorney also talks about "valid", "enforceable", "infringement", and "damages", they are showing an understanding of what makes patents that are strong, useful, and valuable.
6. What percentage of the attorney fees that you pay go to the attorney?
Big law firms are like two- or three-tier pyramid schemes. Less experienced associates do the work while more experienced partners take a cut. The cut is often more than 50%. The partners spend their time looking for large clients with a lot of business. Attorneys in small law firms and solo practitioners get to keep all the money you pay. This gives them more incentive and freedom to spend enough time to do a good job for startups. Small firms for small companies, large firms for large companies.
7. Do I need an agent or an attorney?
Patent attorneys can file lawsuits in courts. They tend to bill at significantly higher rates than patent agents. For the purposes of getting patents, attorneys and agents are equally credentialed. If you find an attorney who describes patent agents disrespectfully, look for somebody respectful to work with.
8. What are some of the most important cases you have read?
Doing the wrong things in a patent application can hurt the eventual patent's enforceability. To avoid the pitfalls, your patent attorney should have read and understood at least the most important US case law. They should be able to summarize for you the important takeaway lessons from KSR, Alice, Mayo, and Festo. For software inventions, they should also know Williamson.
9. What do you know about my field of technology?
This is simply to test your patent attorney's preparation. A good patent attorney will take the time, off the clock, to read your website and do at least enough web searching to know what you mean when you use the technical words from your website.
10. Do they ask questions?
Many patent attorneys record discussions with inventors for later review. This is okay. But it's important that a patent attorney follow and understand their entire discussion with the inventors. There is something initially confusing about every great invention. Attorneys who lack self-confidence will not stop to ask a question when they don't understand something. They pretend that they understand, hope that they can get back on track as the discussion continues, and hope to rely on the recording later and look things up. That's bad. You need an attorney who will stop at important points in a discussion of an invention and ask the inventor to provide more detail.
What doesn't matter
These are some things that are not very important in choosing a patent attorney.
Years of experience
New patent attorneys should learn on large company clients first. A startup should work with a patent attorney who has at least 5 years of experience and have written 60 patent specifications. This is because the patent office takes 3 years to do things. So, it takes 5 years for an attorney to have made a few mistakes and have had a chance to learn from their result.
Beyond 5 years and 60 specifications, it doesn't matter. A lot of old timers follow habits that they learned many years ago. As case law develops, best practices change over time. It is more important to find an attorney who reads case law than one who has been in practice for a very long time.
Billing rate
There is very little correspondence between an attorney's hourly billing rate and their competence. Some who work at a high rate can do a good job in a short amount of time. Some will take longer to do a good job but bill at a lower rate. What messes up incentives is when the attorney doing the work has to share a large portion of their income with partners who are not doing the work. Most attorneys can give you a good idea up front of what it will cost. Many will even offer you a fixed fee for the project.
If it's going to cost you more than $16k USD to get a patent application written and filed, that would be a big yellow flag on price. If it's going to cost less than $8k USD, that would be a big yellow flag on quality. Each office action on merits should cost somewhere in the range of $2.5k USD to $4k USD.
Former examiner
Many former patent examiners leave the patent office and become patent attorneys or agents. That is fine. But patent examiners don't need to know about how lawsuits work. They don't need to know how to get good patents that are enforceable, useful, and valuable. Having been a former patent examiner is nice but not a strong reason why a patent attorney is a good one.
Referrals
Be careful choosing an attorney based on a referral.
It's usually 10+ years from when a patent is written until it might be tested in court (for strength) or the marketplace (for value). Prior clients rarely know, for sure, whether they have been served well. So, be careful with another startup founder's recommendation to distinguish between them just liking their attorney or knowing for sure that their attorney served them well.
If the referral is from another attorney or somebody in a company with a recurring budget for attorneys, be skeptical about their motivations. Who paid for lunch last time they got together with the attorney being referred? Does the attorney being referred send holiday gift baskets?
Personally, I always pay for lunch and give the gift baskets to my inventors. My bias is towards attorneys who have taught me useful things I didn't already know. Those are the ones I refer to startups.
Aligning interests
In theory, an attorney must represent a client's best interest. In reality, an attorney's interest in getting paid is in direct opposition to their client's interest in saving money. Even worse, most patent attorneys have no interest in a patent after it's granted.
There are two ways that an attorney's interests could be aligned with their startup client.
A carrot.
The startup pays the attorney in equity. This way, the attorney has an interest in getting a strong, valuable patent so that the value of the stock won't be greatly harmed by a patent failure. An alternative is pay in installments stretching out over many years. Unfortunately, there are many reasons, beyond an attorney's control, that a startup can fail. So, very few attorneys accept equity compensation or installment payments.
A stick.
The attorney provides a warranty that a patent claim is valid. If the warrantied claim is held invalid in court or a post-grant challenge, the attorney pays the startup 10x what the startup paid to get the patent. Entrepreneurs are masters of risk-reward trade-offs. Attorneys are trained to avoid all possible risk. Therefore, good attorneys don't want to provide a warranty on their work. Because the guild keeps attorneys scarce, they don't have to.