Dear bkft:
Please allow me to elaborate on the material in my answer to your
question regarding expenses associated with the patent process.
Your desire for a match, as stated in your question, is precisely the
right mindset with which to approach the problem. First, you need to
have a good understanding of the technologies you will be seeking to
patent. It is only with a knowledge of your needs that you can hope
to find a patent attorney that will meet them.
First, you will want to consider the attorney's educational background
and knowledge of the technologies you will be seeking to patent.
Although I am sure there are exceptions, in general, you would want
someone with the appropriate engineering degree to handle your patent
applications. For example, you would typically want someone with an
electrical engineering background to be pursuing hardware patents
rather than someone with a chemical engineering or a materials science
and engineering background, unless somehow chemical engineering or
materials science and engineering played a substantial role in the
invention. "Brand-name" schooling can also be a helpful initial
screen, although it should certainly not the the primary factor.
Second, and most importantly, you will want to consider your patent
attorney's practical experience with obtaining utility patents. Many
patent attorneys are litigators, and although they have passed the
patent bar exam, they have little or no actual experience with
applying for patents. Trademarks and design patents are also quite
different from utility patents. You do not want to pay them to learn
at your expense. Seek an experienced litigator when litigating, not
when applying for a patent. The skill sets are quite different. The
patent bar exam no longer requires applicants to write claims, yet
claims are the most important part of a patent application.
Given that there are more than 20,000 active registered patent
attorneys (see URL below), you can afford to be choosy. Identify
attorneys with specific experience applying for patents in the same
field as your invention. The more patents they have applied for, the
better. Gain an understanding of their success rate, both overall and
in your invention's particular field. There are many aspects of the
process that can only be learned by going through it many times,
especially when dealing with Office Actions. A seasoned attorney is
well worth the additional expense.
http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html
"Registered Attorneys and Agents Search" United States Patent and
Trademark Office
Another issue to fully understand is who will actually be doing the
work. Who will do the patent search, who will write the Patent
Specification, and who will prosecute the Office Actions? There is no
point in paying for a seasoned attorney if a junior attorney, a
paralegal, or a patent agent will be doing nearly all of the work.
While it may be sensible from an expense standpoint to have some tasks
performed by lesser paid individuals, such as the patent search, you
want to make sure that you understand what will be happening and what
the role of the attorney will be in preparing your patent application.
If you will be applying for patents both domestically and
internationally, you want to be assured that the patent attorney you
select has knowledge of the procedures of the countries that you will
be pursuing obtaining patents in.
Finally, you want to gain an understanding of any conflicts of
interest that might exist between the attorney and his or her firm
regarding competitors and yourself and how they would be handled, both
during the application process and in the event of litigation. If
litigation is a reasonable possibility, you will want to be aware of
the firm's capabilities in that area.
I hope the above information is helpful to you in selecting a patent attorney.
Sincerely,
Wonko |
Request for Answer Clarification by
bkft-ga
on
11 Apr 2004 18:10 PDT
Dear Wonko,
Thanks for the detailed response. I have two clarification requests
related to my original question:
(1) I am wondering whether there are any decision factors specifically
related to being a small startup company, vs. a larger company. For
example, startup companies may have less time, less in-house
experience, need for faster execution, etc. Are there specific
dimensions to look for in patent counsel that would make them more or
less appropriate for a startup company, versus a more mature, more
capitalized firm?
(2) Related to patent application, I am wondering how to assess the
ability of a firm to help develop a "coherent patent strategy" vs.
filing point patents. Beyond the answers you've already given, if we
wanted to hire a patent attorney to help develop a coherent patent
strategy (what things should be patented and why), what should we look
for as demonstrable proof points, and what sorts of interview
questions might be relevant.
I think clarifying these two questions will cover my original goals.
Thanks!
--- bkft
|
Clarification of Answer by
wonko-ga
on
11 Apr 2004 19:04 PDT
In response to your follow-up questions:
The more "handholding" the startup companies require, the more
important significant patent filing experience is. The attorney must
also be willing to spend time teaching the startup firm what needs to
be done and must be comfortable working with an inexperienced client.
A good thing to inquire about is how much experience the attorney has
working with startups as opposed to large, established companies.
A smaller, boutique-type firm can probably offer faster execution, but
may lack the broader viewpoint created by litigation to assist with
developing a coherent patent strategy. The extent to which the patent
attorney is able to focus his efforts on your area of interest is
particularly important with a view to patent strategy. Does the
attorney, or the firm as a whole, have extensive current knowledge of
your industry and competitive activities in addition to the patent
filing expertise you need ? A larger firm is more likely to have
attorneys that are able to specialize in a particular industry and set
of technologies than a smaller one is.
Potentially, the practitioner you are looking for could be at a large
firm or a small firm. The key things to look for are a knowledge of
current events in the industry (especially those relating to
intellectual property), a track record of successful patent
prosecutions in related technologies, and prior experience working
with startup companies.
I hope my clarification is useful to you.
Sincerely,
Wonko
|
