Over the past quarter of a century, I have filed many patents — over twenty-five, to be exact! I have had the unfortunate experience of having to defend some of my patents in federal court. I also manage a portfolio of international patents. I have worked with attorneys on the West Coast, the East Coast, and everywhere in between. If it isn’t already obvious: I’ve spent hundreds of thousands of dollars on attorneys. Over the years, I’ve learned how to save money while getting the most out of working with an attorney. This is my advice!
First, before we get to the nitty-gritty, I want you to always remember that your attorney is working for you. Like any other person you might hire, be it a plumber or an interior designer, you need to set specific boundaries and talk about expectations before you start working together. It’s important to get a bid for the job you want done; expenses can quickly escalate. And of course, if you’re going to be working closely with your attorney for an extended period of time, make sure you choose wisely: You’ll be married to one another for a little while.
1. Try to find an attorney via referral. Referrals are always best, because there’s no better endorsement than a personal one. However, there are a few other strategies to finding the right patent attorney for you that I recommend. Consider reading other patents in your product category and contacting the authors. Having an attorney that is familiar with your technology is a plus, but not an absolute necessity, unless you are in a highly specialized field (like software technology or medical technology, for example). If your idea is simple, a good patent attorney should have the expertise and background to get the job done.
2. Don’t constrain yourself by physical location. Patent law is federal. Over the course of my career, I have rarely actually sat down face-to-face with one of my attorneys. I have found that working with patent attorneys on the West Coast and East Coast is typically more expensive than working with an attorney in the Midwest: There are higher overheads in major cities that will be passed on to you. So if you find a patent attorney in a smaller city, you might get a better deal.
3. Understand the pros and cons of working with a large firm versus an independent practitioner. Most large firms are full service, meaning they are able to cover a wide range of intellectual property (like trademarks, copyrights, licensing agreements, and even litigation). They also tend to have experienced attorneys. If you have to go to court, being represented by a large firm tends to give you more clout. However, they’re also more expensive. More likely than not, you’ll start out working with a seasoned senior associate or partner, but he or she will soon pass off your case to another attorney with less experience. So the senior attorney will overview and manage the process, but he won’t be directly involved.
On the other hand, independent patent attorneys are usually more affordable and will work directly with you. But patent law is very specialized, so you might end up having to work with more than one attorney to get all of your legal needs covered.
Either way, patent law is a war of words. I’ve seen it firsthand! So hire someone whose work you respect and trust. Always make sure to read the patents they have written.
4. Realize that patent attorneys are only as good as the information you provide them with. Never forget that you’re the expert. To work effectively with an attorney, you need to know your invention inside and out (which means looking up prior patents yourself, and knowing the difference them and your idea). Don’t take a passive role and assume your attorney is going to do everything you want. Send them a prototype if you can. Definitely send over your sell sheet. Always read everything they write in your patent application, and beyond that, make sure you understand what they’ve written. Recently, I discovered how important it is to explain the big picture of my ideas to my attorneys. When I explained the benefits of my idea and how it was going to help people, it was like a light bulb turned on: All of a sudden, they got it.
5. Get everything in writing. Make sure you understand how they bill clients. Do they charge by the hour or for the job? I prefer to get an idea of the big picture; it’s easier to compare estimates that way. Keep all of your bills and look at them line by line. If they do overcharge you, you can usually get them to reduce your fee to your original big, minus 10%.
6. Educate yourself, because it’s too expensive to let them teach you! Learn as much about the legal process as you can on your own – save only the important questions for your attorney. On that note, ask if you can record your conversations. If you don’t understand something the first time around, you can listen to it again. Send an email with your questions before you speak on the phone. It will save you time and money!
If I had heard some of this advice before I started working with an attorney, I would have saved myself a lot of money.
Originally published on Entrepreneur.com October 14th 2013.
