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   What to look for in patent lawyer
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   Author  Topic: What to look for in patent lawyer  (Read 736 times)
JodiB
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What to look for in patent lawyer
« on: Aug 17th, 2006, 9:58am »
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I'm weighing options of selecting an agency/attorney.  Being a small company with limited resources I originally figured I could cut down on time spent by attorney on learning the relevant subject matter by searching for patents in closely related technology keywords but have found a couple of them are turning me away for possible conflict with other clients.
 
I could go with larger agency for their experience but at same time I fear I may just be one more customer #number with a deadline, as compared to smaller firms I risk their lack of experience but they may put in more time.
 
Are there some key things I could easily look for in helping me select an attorney?  should I take a couple of their filed patents/apps and closely examine their claims?  What are some of the telltale signs?
 
thanks!
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Bill Richards
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Re: What to look for in patent lawyer
« Reply #1 on: Aug 17th, 2006, 10:49am »
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By agency, I hope you mean law firm?  You'll want a qualified patent attorney or patent agent, not an invention promotion organization.  (I won't get into that here.)
Though large law firms may collectively have more experience, you hire a lawyer, not a firm.  A small firm or even a solo practitioner is capabable of doing just as good a job.  In fact, the attorney at the small firm or a solo may well have more experience than whomever would be handling your case at a large firm.  What you want is someone with whom you feel comfortable and can trust.  After talking with the attorney for a half hour or so, you should have a good idea of his/her understanding of your invention and whether you're compatible.  As a patent attorney, I like to have some level of rapport with my clients, so it works both ways.
As for costs, the solo or small firm generally has lower overhead and may charge lower rates for comparable experience.  But, it varies widely.
I don't think looking at their claims is worth the time.  Unless you're an experienced patent practitioner, looking at the claims will do you no good.
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William B. Richards, P.E.
The Richards Law Firm
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JimIvey
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  jamesdivey  
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Re: What to look for in patent lawyer
« Reply #2 on: Aug 17th, 2006, 1:30pm »
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Bill gave a good answer.  I'll just add my own spin to some of the points.
 
on Aug 17th, 2006, 9:58am, JodiB wrote:
I'm weighing options of selecting an agency/attorney.  Being a small company with limited resources I originally figured I could cut down on time spent by attorney on learning the relevant subject matter by searching for patents in closely related technology keywords but have found a couple of them are turning me away for possible conflict with other clients.

Like Bill pointed out, even within a firm, you're likely to have all your work done by a single attorney for exactly the efficiency reason you point out.  There are general two exceptions I can think of.  First, you can generate more work than one attorney can reasonably handle.  Then, your work will get divided amongst two or more attorneys (or agents), typically divided along categories of technology to preserve as much of that efficiency as possible.  Believe it or not, attorneys like that efficiency too.  Second, newly minted practitioners typically work under the supervision of one or more experienced practitioners and your work may get assigned to a supervised practitioner (effectively having two or more attorneys working on each project).  In theory, you should pay the same whether your project is handled by a less experienced practitioner taking more time at a lower rate or a more experienced practitioner taking less time at a higher rate or some combination of the two.
 
on Aug 17th, 2006, 9:58am, JodiB wrote:
I could go with larger agency for their experience but at same time I fear I may just be one more customer #number with a deadline, as compared to smaller firms I risk their lack of experience but they may put in more time.

In a bigger firm, to an associate, that's pretty much how you would be viewed.  In a bigger firm, to a partner/owner, you'd be viewed differently -- as $X in unearned accounts receivable.  You're unlikely to be viewed purely as a co-venturer by any practitioner unless you hire them as in-house counsel, but smaller firms and solo practitioners have more leeway in taking on that role than do bigger firms.
 
on Aug 17th, 2006, 9:58am, JodiB wrote:
Are there some key things I could easily look for in helping me select an attorney?  should I take a couple of their filed patents/apps and closely examine their claims?  What are some of the telltale signs?

I'd suggest reading the entire patent/application, not just the claims.  I'd also suggest verifying that the attorney whose name appears on the patent/application actually wrote it.  The best way to find out is to ask the practioner herself/himself.  Another way is to take a look at the originally filed application and associated papers in public PAIR.  
 
But the practitioner's work goes beyond the writing of the application.  THere's the entire prosecution -- what amendments/arguments were made and how successful were they in getting the case allowed but still in a good, enforceable state?  The unfortunate reality is that assessing the skill of a patent practitioner is nearly as complex and being a skilled patent practitioner.  I suppose you could say it takes one to know one.  Wink
 
Regards.
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