17 Tough Questions for a Patent Attorney
By Jeffrey Dobkin
Do you charge for your first meeting?
This will tell you how easy it is to deal with the attorney. If they aren’t willing to give you a few minutes up front, it will only get worse. This should be the honeymoon time – when everything is at its best. It’s a chance for you to screen the attorney, and I’m sure they will be screening you as a potential client. If they can’t invest in a no-charge first meeting, it’s a deal breaker for me – and I pass.
Is it on the phone?
I would think you would want to have a face to face meeting – you can explain that it can be just for a few minutes and you just want to look them in the eye and shake their hand. Better yet let them know they can take the reigns and direct the meeting. I want someone who will meet with me – and not set the tone of “he is too busy to handle my business” or doesn’t place enough value on my account.
Is your specialty “Writing Patents” or defending patents in court?
Have you (or one of your team) ever had to defend one of your patents in court?
How many cases have you had to defend for your patents?
Has your firm ever lost a defense case on one of your patents?
The answer shows several things: If the attorney thought the claim (the claims define the extent and scope of the protection of your patent) was important enough and strong enough for him to write the patent on that basis, he should feel he could successfully defend a patent based on these claims in court.
If he didn’t feel the claim was important enough or strong enough to use as the basis for a patent, why did he write the patent? (Don’t forget YOU paid him to do this, and my feeling is you paid him to write a defensible patent.)
If his defense wasn’t successful: was it the fault of a poor selection of claims, or the fault of poorly drafted claims? If the case was lost: was this the result of how the claims were written by the attorney, or was the case lost from a poorly litigated defense?
In fairness, not everyone who is right wins in court. And some wins or losses have nothing to do with justice. But a patent attorney has so much control over the whole process — figuring out what claims are (if any), if they are valid and defensible, how to define them in writing so they are defensible in court, and how to litigate the defense of the claims as he has written them… he should seldom lose in court, if ever.
How many times have your patents been challenged in court? What % of the time have you won?
The number of times an attorney has had to defend a patent he has drafted is very important. If the patent is written really really well, no one (or few) will challenge it. They’ll see from the patent itself that it will be tough to win in court.
If the patent is sloppy, carelessly, or poorly written with gaping holes in the language or claim structure; and if the product is viable and profitable, many will challenge the patent. This is the secret question behind the question.
What are your hourly rates?
How are they billed (tenth, 1/4 hourly, half hour?)
How about for phone calls – how much do you charge for a brief phone call?
It may be uncomfortable for you, but let the attorney speak next. Don’t say a thing even if there’s an awkward silence.
I guess I just personally don’t want to spend fifty bucks to ask a lawyer a quick question. So I ask this up front.
What do you charge for a patent search?
Your attorney most likely doesn’t do searches himself, so ask is there an hourly rate for the searcher company?
Ask straight up if his firm does this or does he hire it out?
There are specialty firms that just perform searches.
What is the process for a search? Is there a preliminary or exploratory search first? Do they start online, then if things look promising go to a patent depository (there are 85 around the country just like the one we have here in the Philadelphia library) or do they go directly to the patent center in Virginia?
Note: most big search firms have offices in Virginia close to the patent office.
In the interest in being fair, deeper searches just take more time.
If you are General Motors a patent search will be more expensive as it will necessarily be more thorough.
If you may or maybe not bring your product to market there would be little reason to do a very thorough (= very $$$$) search up front. A brief preliminary go/no-go search up front is all you need to explore at this time. If you decide to move forward, you can always have the firm go back and research deeper.
What can I do – that you can guide me in – so I can save money?
Who in your firm will handle my account?
If the attorney hands everything off to a Jr. Partner, what good is that. And beware – when they are both talking about your patent you are being double billed for both their time during the meeting. That talk you got about saving you money by doing this? Unless it’s a big case, it’s likely bullshit.
Can you approximate the cost of my patent.
Most attorneys will say “Oh, they are all so different!” and some won’t quote a final figure. OK, I get it – they’re different. But seriously, after doing hundreds, maybe thousands of patents a good, honest attorney should be able to give you a pretty good idea of the range of costs. If they won’t, ask what most of his or her patents cost – they should know that off the top of their heads.
What is the cost of a Provisional Patent?
Ask the cost of a Provisional Patent. This should be CHEAP. It should NOT be considered as “Let’s do the whole utility patent work for this, then when you file for a regular patent most of the work will be done.” I had an attorney say this to me (personally) and I bolted out the door. This approach is strictly for the benefit of the attorney, and -0- consideration for you and your needs for an inexpensive way into the patent process – so you test the waters inexpensively to see if your invention will fly.
How many patents do you write each month/year?
This will give you an idea of his experience. Remember, experience isn’t king: a lousy attorney may write a lot of patents and they’ll all be lousy. Even though he wrote a lot of patents this alone doesn’t make him good!
Do you have any references I can call who will tell me about their experience with you and your services?
Some attorneys may be reluctant to give out client names, but you should ask this to see how they handle the question. (The hidden question within the question.)
It’s not only the answers the attorneys give you that are are important, it’s the the style of answer, the way he handles questions and the way his or her answer is crafted is important also. It’s how your relationship will build-out from this initial meeting point. If they’re vague and evasive when answering questions, you are going to get this same style of answers to all your questions somewhere down the line. How about when you discuss your bill – are the answers going to be vague or evasive?
In a face to face meeting, how sharp was the attorney, and how smart and direct were his questions to you? How ‘on point’ and focused was he in the meeting? You want to see both his good side – how he handles you as his client, and his tough shrewd side – how he will handle other attorneys when talking about your patents as well.
Beware. Once you start with an attorney they can make it difficult to switch: slow or incompleted paperwork. Late in filings. Disorganized and uncaring.
Always remember, it’s YOUR MONEY you are asking about, and YOUR patent you will be paying the attorney for.
How open are they to your questions or phone calls? How do you relate to them on a personal level, and on a business level?
Make sure you are getting what you want in a patent attorney – and a business person – you will need both of these traits to rely on when stepping into the future. He or she will become a partner of sorts – a legal liaison – in this part of your venture. Remember too it’s YOUR invention, your patent, your venture, and YOU can and should control every aspect of it.
Bio: After serving on the Board of Directors for over 14 years, Jeffrey Dobkin is the President of the American Society of Inventors. He can be reached by telephone at 610-642-1000, by email at Jeff at Dobkin dot com or found online at JeffreyDobkin.com