Do you have an idea for a new product? You have probably heard that you should get a patent to protect your intellectual property. When you determine it’s the right time to file a non-provisional patent application, it’s important that you find a great patent law firm and more importantly, find a great patent lawyer.
Over the last 30 years, I have worked with many different patent law firms and many different patent attorneys to help me protect my intellectual property. In this article, I will share everything I’ve learned about finding and working with the best patent law firms as an inventor.
The sad reality is that most inventors don’t understand how to work with patent attorneys at the best patent law firms so that they get the best patent possible. I do. More than 20 patents have been issued in my name, and I’ve spent over $500,000 dollars on patents. I’ve even had the experience of defending my patent portfolio in federal court in San Francisco against one of the largest toy companies in the world. I have also spoken to countless inventors about their experiences with their patent attorneys as the cofounder of the inventRight coaching program.
Hiring the right patent law firm and working with the right patent attorney is essential for the success of your idea. Please understand that I am not an attorney and I am not giving legal advice. The advice about patenting I’m going to provide in this article is from a business perspective.
The advice in this article will help you:
- Find and work with the right patent law firm to produce a solid patent.
- Save you money and time.
Your Patent Attorney Is Only As Good As The Information You Provide!
First, you need to understand that patent attorneys aren’t created equal. Like any profession, some patent attorneys are better than others. Spending more money is not the solution to getting a better patent. Over time, the biggest lesson I’ve learned is that the person helping you with your patent application is only as good as the information you provide them with.
This means that inventors have a large role to play in getting the most value out of their patents!
A majority of patents are written from a legal perspective only — meaning they do not include information that relates to the business objectives of the inventor. This is a problem if you want to do more with your patent than display it on your wall. It is not the job of your patent attorney to determine your business objectives. It is up to you, and only you, to do the necessary research, thinking, and planning.
I view patents as tools to help me succeed in business. Some patent attorneys are more interested in the business success of their clients than others. When you find a patent attorney who cares about your success in business, you know you are working with someone who values a long-term relationship.
How to Find the Best Patent Law Firms For Inventors
To find a reputable patent attorney, getting a referral is the best approach. Follow these steps to get started:
- Connect with inventors that you respect, either in person or through LinkedIn.
- Ask them who wrote their patent application, and if they would recommend that patent attorney.
- Use LinkedIn to search for successful inventors in your industry, and reach out to them for recommendations.
By connecting with successful inventors and asking for referrals, you can find a great patent attorney who will provide high-quality service.
Don’t Hire a Patent Attorney Without Answering These Questions
After you have identified some potential patent attorneys to hire, the next step is to understand if they are qualified to help you and how much experience they have. You can ask them these questions directly or do this research yourself using information found on the USPTO’s website.
Important questions include:
- How many issued patents have they received on behalf of their clients?
- What is their success rate in getting patents issued for their clients?
- Have any complaints been filed against them?
- Are they in good standing with the USPTO?
Use this link to find registered patent practitioners, check for complaints, and file a grievance about your patent attorney or patent agent with the USPTO: https://www.uspto.gov/learning-and-resources/patent-and-trademark-practitioners/finding-patent-practitioner
The Best Patent Attorneys Do These Two Things
As you compare patent attorneys, consider the following. You need a patent that is easily understood by others. So, find and read a few patents written by that attorney. Do you understand what they say?
There is another important quality to look for. Does the patent attorney understand how to work with patent examiners to overcome their objections? After a non-provisional patent application is filed with the USPTO, it will be reviewed by a patent examiner within 1-2 years. If your patent examiner finds evidence that your utility invention does not meet the requirements for patenting, they will issue you what’s known as an “office action” that explains their reasoning. To come to an agreement, your patent attorney has the option of scheduling an interview with the examiner.
Responding to office actions can become extremely expensive. If your patent attorney is good at working with patent examiners, that can save you money. In my experience, knowing how to work well with examiners also speeds up the process. Make sure the patent attorney you hire embraces interviews with patent examiners!
Fewer office actions means less money spent by you.
Learn more about the art of negotiating with patent examiners in this Inventors Groups of America presentation from former USPTO patent examiner Eric Blatt.
The Differences Between Small and Large Patent Firms
Typically, when you hire a larger patent law firm, you pay more. They have larger overhead. When you work with a larger patent firm, there’s a good chance that multiple people will end up working on your patent application. In my experience, larger patent firms typically have junior patent attorneys write the first draft of a patent application. Later, someone with more seniority reviews their work.
I’ve experienced this many times. It’s not necessarily a bad thing. Getting someone who has a lot of experience and works at a large firm to write your patent application is unlikely. Again, this is not necessarily a bad thing, it’s just reality. Working with larger patent firms is more expensive and can result in questionable quality.
I worked with Carr & Ferrell, a midsized patent law firm based in Silicon Valley, for over 20 years. Their work is spectacular. My patent applications were excellent and expensive.
I’ve also worked with solo practitioners and small patent law firms. Their work costs you less and I have found it to be very good. An example is patent attorney Jake Ward and his Ward Law Office.
I highly recommend him. Please remember that your patent attorney is only as good as the information you provide them with, regardless of whom you are working with!
This is why inventors must be very involved with the patenting process and know exactly what they want out of their patent.
Should You Look For a Patent Attorney Near You?
Inventors often ask, “Who is the best patent attorney near me?” It is not a requirement to meet your patent attorney in person, although it may be beneficial for your relationship. You don’t need to work with a patent attorney or patent agent in your city, in other words. I know many inventors typically want to meet with them in person, but it isn’t necessary due to the other forms of communication we have today.
Here are a couple of things to consider.
- Patent attorneys working in big cities will be more expensive because of their high overhead costs.
- Patent attorneys in the middle of the country who live in smaller cities have less overhead, and thus, the cost of prosecuting your patent will likely be less.
The Difference Between Patent Attorneys and Patent Agents
Another way to save money while receiving a valuable patent is by working with a patent agent.
In this article, I have been referring to “patent attorneys” exclusively. But it’s not only patent attorneys who are permitted to counsel inventors on patents. You can also work with what’s known as a “patent agent.” Patent agents provide the same services as patent attorneys. The significant difference is that they cannot litigate patents in court. Patent agents have passed the Patent Bar, like patent attorneys, but have not graduated from law school.
I have worked with a patent agent on many of my inventions because of the lower cost. Of course, I make sure to provide him with the information I need.
I highly recommend Kevin Prince. He’s an excellent patent agent. (And an inventor himself.)
What Patents Cost
Before you begin working with any patent attorney or patent agent, I recommend asking for an upfront cost in writing. You need to try to get the big picture, and that includes an estimated cost.
Ask them for the full cost of prosecuting your patent application, including responding to office actions. Ask them for any changes to be made in writing, which will help you budget accordingly.
If their proposed budget goes over cost by more than 10 percent, patent attorneys will adjust their billing, I’ve discovered. I had to learn this myself when I first started out. I would call my patent attorney with any question I had, which became very expensive.
Here’s how to reduce some of your patent costs. When you have a question, send a very pointed email only after you’ve done some homework yourself. You don’t need them to educate you on the process, which gets very expensive.
You can find most information about patenting online now instead of asking your attorney and getting billed for their time. There are going to be some questions that you need to have answers to, of course. In that case, I have found emails to be so much more efficient regarding time and cost.
Patent attorneys and patent agents have different ways of billing. Inquire thoroughly.
Knowing the Prior Art
An important part of getting a good patent is knowing the prior art. Prior art is anything related to your invention that could stop you from getting an issued patent because your invention has already been invented and disclosed.
I recommend you learn how to search for prior art. I recommend finding a third party to search on your behalf. This information will help you make sure you have a point of difference. This information can help you re-design or change your invention to overcome the prior art.
Here’s one more tip. Your patent claims are important. Make sure the claims align with your business objective of protecting your invention. Make a list of everything important to you and ensure you find the claims that protect those things.
Should You Hire a Patent Law Firm With Patent Litigation Experience?
Working with a patent law firm with litigation experience can be a big benefit when working on ideas that will be copied and infringed upon. In my opinion, this helped me and my litigation case against Lego, Inc.
I also believe represent clients in litigation, they have a different perspective on writing patents. This helped when I found myself in federal court. The patents that they wrote for me helped. Since they wrote all the patents, they were willing to take my litigation case on a contingency. This is not common, but it was my experience.
Top Tips For Inventors When Working With Patent Practitioners
- Get a referral from a fellow inventor.
- Make sure their patents are easy to read.
- Make sure they have a great record of getting patents issued and working with patent examiners.
- Provide them with good information to ensure your business objectives align with the patent claims they write.
- Ask them about their billing process in writing.
Be honest about whether you like working with them. The inventing process can be very stressful. You want someone who has your best interests in mind.
