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How to find a Patent Attorney

Why is a patent attorney giving me advice on how to find a patent attorney?

Because no single patent attorney can help in every technology - none of us are technically qualified. Every patent attorney ought to turn away clients that have problems unrelated to the areas where they are technically proficient. Chemistry, biotechnology, physics, electrical engineering, and computer software are very different technical fields and, probably, require different patent attorneys. Your patent attorney's technical understanding plays a very important part in shaping his legal opinion. While I probably can't teach you how to "really" tell if a patent is well-crafted, I can give you an objective "cheat-sheet." This will greatly improve your odds of finding someone who is well qualified in your technical field and understands the craft of drafting a winning patent or busting-up a losing patent.
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Do you need a Patent Attorney? {#Do_you_need_an_attorney}

So tell me, what is your problem, exactly?

Most clients only have three different questions that they will ever ask their patent attorney; and, of course, you can ask the same three questions, many, many ways...

  1. Can I patent this?

In other words, are you worried about:

  • your idea "getting out" before you get a chance?
  • the cost of developing this idea into a product, business, or licensing revenue?
  • how much time and effort you will need to make this idea successful?
  • your bigger, better-funded, and well-established competition copying your technology?
  • obtaining a patent that can be easily "designed around" by making tiny, insignificant changes?

  • How can I compete with, or "design around," a patent?

In other words, are you worried about:

  • a competitive product marked "patent pending"?
  • a competitive product marked with a patent number?
  • a patent lawsuit, or cease and desist letter, by one competitor against another competitor in your industry for a product similar to yours?

  • Can I sue, or be sued, for violating a patent?

In other words, are you worried about:

  • bringing a new product or service to market and accidentally violating a competitor's patent?
  • copying a competitor's product or service?
  • your competition's introduction of a product or service that you believe is covered by your patent?
  • a "cease and desist" letter that you received?
  • a patent provided to you by a vendor, customer or competitor (sometimes in a very "friendly" way) that describes something you are doing?
  • a lawsuit that alleges patent infringement?

If you find yourself answering "yes" to any of theses questions, then this system will help you find a patent attorney.

How to FIND a Patent Attorney? {#how_to_find_an_attorney}

The most common questions are where can I find a Patent Attorney and can I trust this person with my confidential information. Of course, without knowing an attorney, the internet and yellow-pages are the most referenced sources. However, there are some misconceptions that can arise when consulting such resources.

The truth is: the lawyer that needs the most clients spends the most on advertising. An attorney desperate for your business may, or may not, be the best attorney for your situation. The largest, flashiest, and frequently occurring ads shouldn't matter when selecting YOUR representative.

The truth is: many, if not most, well-qualified patent attorneys do not advertise. Why not? They don't believe that their type of client would look in the yellow-pages or internet for a patent attorney. They believe the best clients refer other clients to them. Even this system, as you will soon see, has problems, because the patent attorney to whom you are referred may still not understand the technology involved with your patent issue.

The truth is: you might not know that, in order to call yourself a "patent attorney," there are numerous technical and legal qualifications. First, they must have sufficient scientific training, for example, a four-year, undergraduate, engineering degree. Second, they must pass one of the most difficult legal examinations in the world: the U.S. patent bar. Third, they must graduate from law school. Finally, they must pass their state's bar examination.

Unfortunately, in all of this education and testing, they don't really teach the "HOW"s and "WHY"s of writing a good patent application. I will show you a system for finding a patent attorney, who is technically well-qualified to help you. I'll teach you how to objectively estimate the quality of a patent attorney's prior work, in your relevant technical field. You will need to evaluate, using the system below, the prior patents and publications of the particular attorney that you are considering. While these past results may not be an indicator of future success, the absence of past results is certainly NOT a better indicator of future success.

Why is technical experience so important?

Patent law intersects law and technology. Before giving quality legal advice for your specific patent issue, a patent attorney has to know your technology, the related science, the patent law, and hopefully, your industry. A patent issue can look very different for an attorney who has relevant, current experience in your technical field, and where a technically-non-proficient attorney would have to study prior to providing quality legal advice.

While a patent attorney may not have direct experience with the particular details of your technology, they should certainly have a solid understanding of the principles. Many times, what a patent attorney learned during school or the subject of their Ph.D is no longer their field of expertise. Patent attorneys always work on their client's problems; that is where they become experts. You need to know that the patent attorney has both the current, technical expertise as well as the legal skill to solve your problem.

What about "Patent Agents"?

A patent agent is not required to go to law school, just engineering school. A patent agent must limit their services to filing and obtaining patent applications. A patent agent should not help with patent licensing, opinions, lawsuits, or any other legal matters. If your only goal is to obtain a patent, you can apply this system to compare patent agents and patent attorneys.

Legal Disclaimer

While I cannot guarantee that you will find the absolute best patent attorney for your patent issue, I am certain that your chance of finding a good patent attorney will significantly increase if you follow this system. I will guarantee that this system will not be a waste of your time. Nearly everything that you learn about your patent attorney, and the time you spend evaluating the work of patent attorneys that you do not hire, will help create a foundation for the later decisions that you will need to make in your patent issue.

7 Steps for Finding a Well-Qualified Patent Attorney

Investing your time to search for a patent attorney who deeply understands your technology will save you time, energy, and moreover, money. A solid technical understanding prevents mistakes and oversights right from the onset of the consultation.

  1. Making a list of patent attorneys.(10 minutes to 1 hour)
  2. Qualifying your list.(a few minutes for each attorney on the list)
  3. What's your Problem (Patent Issue)? (15 minutes)
  4. Requesting information. (by phone, several hours; by fax, much faster)
  5. Objectively estimating patent quality. (about 20 minutes per attorney)
  6. Interviewing. (about 1 hour per attorney)
  7. Prioritizing information and making a decision. (timeless and priceless)

Step 1: Making a list of patent attorneys.

The goal of this step is to make a list of 20-40 patent attorneys. Start by calling your lawyer, if you have one. Lawyers know each other. Tell your lawyer to give you the names of ALL the patent lawyers in their rolodex.

The next-best resource for finding patent attorneys is at the US Patent and Trademark Office's website. The USPTO provides a searchable database of registered patent attorneys. At the time of this writing, that database is available at this link: . You can refine your list by city, state and/or zip code.

Not all patent attorneys listed at the USPTO website are available to help. Look at the business/firm name and remove any attorneys from this list that work for private companies. Remove any attorneys from this list that work for the federal or state government. You may wish to only contact one attorney from each law firm to help broaden your search.

The final place to find patent attorneys is in the yellow pages or on the Internet. There is one advantage to this method. Usually a patent attorney's ads provide some indication of the technology areas that that patent attorney undertakes. You may be able to eliminate patent attorneys that do not list the technology area related to your patent issue.

Step 2: Qualifying your List.

The goal of this step is to eliminate anyone who is not actually licensed and insured to practice law. Contact the state bar where the lawyer is admitted to practice. Contact the state bar association, on the phone, or through their website. You want to know whether the lawyer has been disciplined or had complaints filed against them. Also, you may be able to check with the state bar association to determine whether the attorney the attorney carries malpractice insurance. However, you may need to ask the patent attorney, during the interview, if they carry malpractice insurance.

If you cannot determine the state where the patent attorney practices law, you must ask the lawyer, during the interview, where his is admitted to practice law and in good standing. Remember, merely being admitted to practice before the U.S. Patent and Trademark Office, does not make someone an attorney. They must be admitted to practice law in at least one state, as well.

For attorneys that you did not find on the USPTO website, go back to the database page and search for the lawyer, by lawyer name, to determine that they are actually admitted to practice before the USPTO and in good standing.

Step 3: What's your Problem (Patent Issue)?

The goal of this step is to help find sufficient words to describe the technical area without revealing important details about your patent issue.

**If you need to file a patent or create rights:@@

You may wisely desire to tell as little as possible about your technology or situation, until you have finally selected a patent attorney. The law provides, in many states, that attorney-client privilege applies even when you are merely seeking legal services, but have not paid the lawyer. While you may rely on this law, in many states, it is easy to develop a description that reveals the technology area without revealing the important details of the patentable invention.

The simplest thing to do is to make an outline. At the top of the outline is a title. At the bottom of the outline are the detailed parts, specifications, and/or materials. Between the top and bottom, add a few layers that group the parts by what they do, or the benefit which they provide. Sometimes one part will end up in more than one place in the outline, which is fine. This is easy for computer software, which is typically organized by subroutines or objects, which have well-defined functions. This can sometimes be less intuitive for mechanical devices, like a paperclip. So here is how you might write an outline for a common paperclip:

  1. Paper fastening device

a. Holding paper in place

i. Two inside wires separated by a distance.

ii. Two outside wires separated by same distance plus the diameter of inside wires.

iii. Ridges along wire create additional friction to hold paper in place.

b. Variable stacks of paper

i. Top loop bends to allow bigger stacks of paper.

c. High-density shipping

i. Flat orientation, little wasted space during shipping/storage.

d. Inexpensive cost

i. Bendable wire materials.

ii. No mold necessary.

iii. Highly automated equipment.

Depending on your technology, you should consider also outlining how your technology is made or produced and how your technology is used. Typically, you will want to describe the title and possibly any non-detailed layers of the outline to the prospective attorney.

If you need to "design around" or defend against another patent:

If you are seeking to design around someone else's technology or defend a patent infringement claim, you will not want to disclose details until you are certain that the patent attorney does not have a conflict of interest. That is to say, you want to know that the patent attorney does not, directly or indirectly, represent or have a financial interest in the other company. In this case, you will simply use the patent number or the other company's website. You will also want to explicitly tell the patent attorney who owns the patent or who is threatening you with a lawsuit.

Step 4: Requesting Information.

Contact each patent attorney and ask them to answer the following questions:

  1. Can you send me samples of at least one patent or publication that reflect your best work in the following technical area: [Use your description from Step 3].
  2. Can you send me a sample copy of your firm's client letter, engagement agreement and/or fee agreement?
  3. Can you send me any other information about you or your firm that you provide to potential clients?

Let the patent attorney know that they will not be considered without sample patents.

I recommend sending this request by fax, as most law offices still deal with fax on an expedited basis. Email can accumulate when someone is out of town and U.S. Mail typically takes much longer. Invite their reply by fax, email or mail, or however convenient for them.

###Step 5: Estimating the Patent Author's Quality.

After collecting all of the sample patents, you can begin estimating quality. A word of caution, this method for estimating quality is not a substitute for the opinion of a lawyer. In other words, don't try to use this method to determine whether the patent is valid or enforceable. This is a shortcut for determining the patent's attorney's actual experience with your particular technology.

Do not read for understanding, just read for enough familiarity to determine answers to the following questions. A patent has several parts, focus your time on the portions titled "Detailed Description" and "Claims."

1.Are the technical details correct?

The Detailed Description should be technical. It should use language familiar to an engineer with skill in your technology. It may or may not be easy to understand depending on the complexity of the patent. The language should be used in a manner consistent with the technology field. As you read, consider the following questions: Are the technical details described in the patent correct? Is the language used in the patent consistent with the language used in your technical field? Are their misstatements of facts or principles? Does the author obviously understand what is described in the patent?

If you are not well versed in the technical field, you may need to find an engineer to help. Engineers are much easier to find than patent attorneys. I strongly recommend that you personally try to read the patents before seeking the help of anyone else.

  1. Are there plenty of alternative technical details?

In the Detailed Description, you should find lots of alternatives, for at least some part of the patent. If materials are specified, alternative materials should also be listed. If a part is used, alternative parts should be used. If there is a way of doing something, alternative ways of doing the same thing should be described. This is vital. To create broad protection for a patent, it is necessary to describe multiple ways of performing the invention.

  1. Can you understand the claims?

Patent claims ought to be understandable, at least to an engineer. However, many patent claims are stilted in legalese. The chart below should help you translate the legalese into something a little more understandable.

Whenever you see the word...Think this instead...
comprise, comprisingprovide, providing OR include, including
consist, consistingonly include, only including
said, suchthe
at least onea
whereinwhere OR in which
structured and arrangedmade
means for, first meanspart for, first part

Read the first claim using the chart as necessary to substitute words. Take your time. It might help to know that the patent claim is like a checklist. Someone must do all of the items (every word) in the checklist in order to violate the patent. Can you understand what all of the items are in the checklist, and do you have some idea about what may be prevented by the patent? Do you understand the combination of parts, steps, etc. that are needed to infringe one patent?

Step 6: Interviewing.

There will likely be a patent that stands out, and you may be inclined to make an immediate decision. Instead, follow through and discuss your situation with two to four (or possibly more) patent attorneys. Here are some interview questions to ask.

  1. How many years have you been practicing patent law?
  2. Did you practice as an engineer, and if so, how many years and in what fields?
  3. Have any of your patents been litigated?
  4. Who authored the patent/publication that you sent to me before our interview?
  5. Do you carry malpractice insurance?
  6. Have you been disciplined by any bar association?
  7. What is the process for handling my case?
  8. Who will be working on my case?
  9. How do you keep me informed on my case?
  10. Do you represent anyone else in the area of [use your description from step 3]?
  11. Is my idea/technology/case any good?
  12. Do you regularly attend continuing legal education in patent law?
  13. Do you teach continuing legal education to other lawyers?
  14. Have you published any articles, guides or books for the public or other attorneys?
  15. How much of your time do you spend practicing patent law?
  16. Who else should be on my list to talk to?

Remember the answers to these questions ought to prompt you to ask more questions.

Question 4: In many law firms, the individual attorney's name is not printed on the patent; rather, the law firm's name is listed instead.

Question 11: This is a trick question. It is almost impossible to tell if a patent is strong or valuable after a brief interview. The patent attorney's answer should reflect this reality.

Question 16: This is an important question as all good patent attorneys should be able and willing to refer you to other patent attorneys that they feel are qualified to handle your case.

Step 7: Prioritizing Information and Making a Decision.

The last step requires you to organize and process the information. I don't have any particular suggestions about how to organize the information that you have gathered, but I want to suggest that you give the information the following prioritization. Item 1 is very important, following down through the bottom, which is less important.

  1. Results

Past results are a good predictor, but no guarantee, of future results. Some attorneys will claim that they can't discuss past results because of client confidentiality. This is untrue. Issued patents are public records. Litigated cases are published in legal publications. Court records are open for public inspection.

  1. Technical Understanding

A solid technical understanding is absolutely essential to a correct legal analysis.

  1. Experience

Chances are, the longer you have done something, the more proficient that you are at doing it.

  1. Industry Experience

Industry experience, such as past clients in similar/same industry, can be valuable. The patent attorney might be familiar with customs and trade practices in the industry which may allow for a stronger written patent application.

  1. Certifications

For example, Best Lawyers in America, Martindale Hubbell, membership in American Intellectual Property Law Association (AIPLA), membership in Intellectual Property Owners Association (IPO).

Final Thoughts

This method requires significant work. However, if your patent issue is, or becomes, vital to your business, this is the best "shortcut" to finding a patent attorney who really understands your technology. While this system requires hours of your valuable time to find the appropriate patent attorney, having the right patent attorney will ultimately cost you much less time, money, and energy.

I am constantly improving my system, and making new editions to this reference. I'd love to hear about your experience selecting a patent attorney, invention promoter, or other innovation partner. You can contact me through my website .

Good luck on your search!

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