There are many things to consider when asked, what to look for in a patent attorney. Ultimately you want to be with someone you trust. Lots of people find this through a personal referral, often for all types of attorneys. But what should you look for if you don’t already have that connection? Here are 4 things to think about.
"Ultimately you want to be with someone you trust."
Patent Attorneys have a specific license to practice. It is distinctly different than a regular attorney. While a patent attorney has graduated law school just like any lawyer you may find, there are additional requirements for a being a licensed patent attorney.
Patent attorneys must have a specific undergraduate degree or a sufficient number of credits in a scientific field. Some examples are biology, chemistry, and the many fields of engineering. This helps ensure that your attorney has a good understanding of your invention, not just the law.
Additionally applying for and following that application through to issuance (called prosecution of the patent) has a list of rules that do not appear in other areas of the law. Patent attorneys are separately tested and must pass a separate test for their license -- the patent bar.
You can also be represented by a patent agent, however an agent has never been to law-school and therefore cannot help you with legal issues such as patent validity, infringement cases, and all patent litigation.
We already talked about the fact that a patent attorney needs a specific type of education to become a patent attorney. But does their background match with your invention? A patent attorney with a degree in biology may not have any special knowledge or talent for your software invention, or downhole drilling motor. Likewise someone with a mechanical engineering background, may not have any special understanding of your chemical process. Make sure you know the strengths of your attorney and that they match with your needs.
At this point you have found a qualified patent attorney, who has the right knowledge to understand what you do. But how do you convey that information? How does the attorney let you know that your idea is translated onto the application correctly. Once a relationship has been established communication through draft or memo may become the most efficient way to work, but at the outset make sure that your patent attorney quickly understands the ideas you are trying to convey. Speak to them.
The application process for patents is a long and costly one. No person can manage it all alone. Without sufficient support for your attorney mistakes can happen. While the cost may be a little higher using a patent attorney with a large enough firm to make sure that redundant checks by themselves, managers or partners and paralegals happen automatically will be well worth it.
Additionally, using a firm with multiple attorneys means that if your inventions span multiple fields you can take advantage of the attorneys that have the background to best understand, write and defend your application.
In most fields the people who find the highest levels of success are the ones that are passionate about their craft. There is plenty to be passionate about in this field. Engineers and scientists drive to solve problems, and create new ideas. They often get lost in the project. Lawyers have a passion for their clients, they want to truly advocate for the best result for their clients. Make sure that your patent attorney is engaged and has a passion for your project. This will result in them asking more questions, having a better understanding of your invention and writing a better application for you.
When these 4 things are present in your patent attorney you will be in the best position to make the most out of your idea.
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