Over the course of my career, I have filed many patents and worked with many attorneys. In fact, I have over a dozen patents in my name. So it is with certainty that I say: They’re not all created equal.
The truth is that patents are expensive. And although they can be of great benefit to you and your business, plenty of patents don’t have any value at all. All of which is to say, it is imperative that you find a patent attorney who has your best interests in mind. If you do, chances are that you will have a long and fruitful relationship.
When and if you have an idea that’s worth filing a patent on, these are the qualities you should look for in a patent attorney.
1. Success. How much experience does this attorney have writing patents that have actually been issued? In other words, what is his or her success rate? In my experience, getting a patent issued is never easy. In fact, it’s a road fraught with unforeseen obstacles. Hiring someone who has the experience to navigate these challenges is key.
2. Command of the written word. I like to say that patent attorneys are only as good as the information you provide them with. Before you hire an attorney, ask to read some of the patent applications he has written. Do you understand what he is saying? If you don’t, it’s unlikely that a judge, jury, or potential licensee will either. A patent only has value when its claims are written clearly and concisely.
3. Litigation experience. I had to defend my patents in federal court, so I truly understand how important it is that the patent attorney you hire to write your claims has experience with litigation. Defending intellectual property ownership is, in essence, a war of words. If you end up having to defend your claims, you will want them to have been written in the most expansive way possible.
4. Common sense. The attorney you hire needs to be capable of grasping the bigger picture. How is this patent going to benefit your company? Sometimes attorneys get so caught up in the details they forget that your intention is to make money.
5. People skills. Some time after you file a patent, you will receive an office action from the United States Patent and Trademark Office notifying you that your claims have been rejected. This is fairly standard procedure. (At least, it has been for me.) A good patent attorney will contact the patent examiner who reviewed your application to set up a meeting to discuss why your claims were rejected and what can be done about it. I have sat in on calls that have made me want to pull my hair out after five minutes. But a good patent attorney is patient, never loses his cool, and is skilled in the art of negotiation. In other words, he will work with the examiner to find a way to amend your claims so that they can be patented.
6. Time management skills. When it comes to the legal field, time is money. A good patent attorney will help you understand how he bills his hours so that you can communicate efficiently. After all, it’s in his best interest to do so, because there’s a good chance you’ll be hiring him again.
7. A healthy sense of doubt. Questioning the merit of your innovation isn’t your attorney’s job. I get that. But if he points out that your idea may be difficult to patent due to the prior art that exists, you know you’ve found a winner. The best advice my longtime patent attorney John Ferrell ever gave me was, “Steve, don’t worry about protecting your idea. We’ll take care of that. Worry about selling it.”
Truer words have never been spoken.
Originally published on Inc.com December 10th 2014.
