Finders keepers: not sure how to choose the right patent attorney? Here's where to look for

Entrepreneur, July, 1998 by Tomima Edmark

You should first understand what's required to be a true patent attorney. A patent attorney must not only have a law degree, but also an undergraduate degree in a technical field, such as computer science or engineering, that has been approved by the Patent and Trademark Office (PTO). A licensed patent attorney must also pass a rigorous test administered by the PTO. Once the attorney has passed the test, he or she is given a PTO registration number and is licensed to practice before the PTO in patent cases. Individuals without law degrees, but with an undergraduate degree in one of the approved PTO technical fields, may take the test. Once they pass the test, they're known as patent agents and may also submit patent applications to the PTO. However, a patent agent is not allowed to engage in litigation or render any kind of legal advice.

For a listing of all PTO-approved patent attorneys and patent agents, go to the PTO Web site at www.uspto.gov and look under "General Information." You can search for attorneys and agents by geographic location as well as by name in the agent and attorney roster. Another option is to search for patent attorneys at http://lawyers. martindale.com/marhub. This Web site not only outlines lawyers' basic qualifications and contact information, but also provides their resumes.

If you're looking for someone to file only copyright and trademark applications, you should know that the PTO does not require attorneys doing these filings to be registered. But be careful: This doesn't mean just any attorney can perform this function. As with most legal work, you should look for an attorney experienced in this aspect of the law to do the work for you.

FISHING FOR A FIRM

When choosing an attorney, consider the size of the firm. You'll find patent attorneys at three types of law firms, each with its own advantages.

A small patent law firm - maybe with just one attorney - is your first option. The good thing about hiring such a firm is that the attorney you speak with will most likely be the same one who writes the patent application. There is little chance your work will be spread around to others in the firm. Small firms also have less overhead than larger firms, so they can afford to charge less. They can usually give you a very accurate estimate of when the work will be finished because they're responsible for their own calendars. Mark Gilbreth of Gilbreth & Strozier PC, an intellectual property law firm in Houston, says, "When you hire a small firm, you know who your lawyer is. No patent filing is too small for a small firm."

You may decide instead to choose a large patent law firm with 30 or more patent attorneys. A large firm offers a wealth of talent to draw on. Chances are, this type of firm will have an attorney with relevant experience in your invention's specific field. Large patent firms are also skilled in litigating patent lawsuits. This can be very beneficial should your patent come under attack. If you choose one of these firms, you'll probably meet with a skilled patent attorney who will develop a patenting strategy. He or she will then assign the initial drafting work to an associate under his or her direction. This process can be very cost-effective for you because the associate bills at a lower hourly rate.

A large general practice law firm with a patent division is the third place to look for a patent attorney. Since most entrepreneurs will need legal advice on more issues than just patent law, a large general practice firm can serve as a legal grocery store where you can shop for solutions to your various legal needs. You also have the advantage of not wasting time re-educating a firm about your business every time you need legal assistance. Also, a large firm has a wide range of contacts throughout the business community, which can be a great benefit to you and your business. And of course, your validity is enhanced when others know you're using a large, prestigious law firm.

FIRST ENCOUNTER

Once you've compiled a list of patent attorneys, your next step is to interview them. There are several questions you should ask in the initial meeting. First, verify that the attorney has an appropriate technical background. If your idea is a new chemical compound, you want someone with a chemical engineering degree who can understand what you're talking about. Be sure to ask how many patent applications the attorney has filed. A good rule of thumb is to look for someone who has written 50 patents, with at least 10 having been filed in the previous year. This will show competence in patent drafting.

Next, discuss billing. Unlike other legal areas, the billing in patent law is pretty straightforward. A patent attorney should be able to give you an accurate estimate of what your patent will cost. Make sure the estimate includes a patent search, drawings, application filing fees and at least one "office action response" from your attorney to the PTO, in case the initial patent application is rejected.