I’ve written about a conflict that exists between inventors and patent attorneys. I’ve been a little hard on them, even. But there’s more than one side to every story of course. With that in mind, I interviewed two patent attorneys I know who have a great reputation among independent inventors about their practices.
Let me be clear. I believe in the patent system. Patents are tools you can use to further your goals. In 2003, I successfully defended my portfolio of more than 20 patents in federal court. Early on in our relationship, my patent attorney John Ferrell gave me superb advice when he told me flat-out, “Steve, protection is easy. Selling is hard. Go sell.”
That was more than 20 years ago, and it profoundly affected the choices I made as an entrepreneur moving forward. Because I decided to worry about selling instead of protection, I became extremely successful at licensing my patent portfolio. These patents, I might add, covered a technology that was invented in the 1950s. Carr & Ferrell took great care in defining my point of difference and allowed me to help guide them. And when I sued for infringement, they took the case on contingency. Talk about standing behind your work!
I think it’s important to share what patent attorneys who are deeply invested in the success of their clients are doing. After all, it takes years and a significant financial commitment for a patent to issue. Working with someone you trust is key to obtaining the best outcome possible.
First, I spoke with patent attorney and inventor Damon Kali, whom I’ve known for more than a decade. He recently moved from the Silicon Valley, where he spent his career, to the Eastern Sierras of Northern California. One thing I’ve always appreciated about Kali is his perspective on the value of determining whether you have a marketable idea. When the vast majority of patents are not profitable, that’s a clear example of looking out for your client.
Then I reached out to Jacob Ward, a patent attorney from Northwest Ohio whose firm serves primarily independent inventors. In addition to teaching patent law at the University of Toledo, he regularly advises inventor groups in the Midwest. In fact, we became acquainted in 2017 due to his support for independent inventors. (Full disclosure: Ward Law Office made a donation to help Inventors Groups of America, the group I cofounded, put on its first conference, part of which took place United States Patent & Trademark Office. I wrote about that event here.)
Here are key takeaways from our conversations about how they help inventors obtain patent protection.
1. They start slow and with the big picture. First and foremost, Kali wants to understand what potential clients are trying to accomplish. He achieves this by spending about 30 minutes on the phone getting to know the inventor.
“Once I have a clear idea of what the inventor is trying to do and what their experience is, I can start tailoring a patent application to fit their needs,” he explained.
2. They do not charge for an initial consultation. Be wary, Kali advised: A patent attorney who charges you for an initial consultation is setting the tone for how they are going to charge you for future services.
3. They embrace education. In fact, Ward views educating inventors as a core part of his business.
“I do so much initial consulting, sometimes spending one or two or even three hours on the phone for free,” Ward told me. “Before they step into this process, an inventor needs to have a good understanding of what’s required so we can cooperate.”
He also directs potential clients to a network of experts who are similarly willing to share helpful information for free.
“From a business standpoint, I think it’s important that inventors surround themselves with a strong network. No one is an expert at everything.”
With inventors and startups, Kali takes the time to patiently break down intricacies of the patent process. This is markedly different from how he engages with his larger clients, like IBM. “I don’t need to speak with larger clients ever — I do the work and bill. Smaller clients are different. This is a long and complicated process and smaller clients need to understand what, why, and how it’s all going to happen.”
He acknowledged that the process of learning about patents is often painful. But he thinks it’s worth it, and I wholeheartedly agree.
4. They’re good communicators. Kali was a partner in a boutique firm before deciding that he wanted to be able to develop more of a relationship with his clients than what billable hours — the billing system most law firms follow — allowed for. Today, he provides his clients with an upfront estimate of what it will cost to get a patent. This way, he said, he’s able to focus on getting the job done right.
“I’m not thinking about how long our phone calls are. In my opinion, communication with a client is critical for understanding and fulfilling their needs. It’s also what’s required to build a relationship. It doesn’t matter how well you draft claims if you don’t understand what the inventor actually wants and needs,” he added.
If you cannot understand what a patent attorney is saying, that’s a red flag. Don’t be intimidated by jargon you don’t understand. Instead, keep interviewing patent attorneys until you find one who makes you feel comfortable and that you click with right away.
5. There are no billing surprises. Two years ago, when Ward opened up his own firm, he immediately lowered his billable rate.
“I did that for a couple of reasons. Partly based on our overhead — the Midwest is not New York or D.C. We try to provide high quality services at a lower price,” he explained. Like Kali, a fixed estimate is provided upfront for most of his firm’s work.
Receiving a bill before any actual work has been produced is another warning sign to watch out for, Kali said. “My feeling is that if you’re going to charge someone several thousand dollars, something needs to be produced. Not just talking,” he said. “It’s never too late or too soon to pull your case and begin working with someone else.”
In my opinion, good patent attorneys understand that inventors who have a marketable idea and are successful become loyal clients.
Be mindful about who you choose to make part of your team.
This article was originally published on Forbes.com.
