How To Find a Patent Attorney
by Jeffrey Dobkin and Henry Skillman, Esq.
When selecting an attorney or patent practitioner, you should ask a lot of questions. Here are 15 points and some of the best questions. Print this page out and take it with you for the interview.
1. Give the attorney a very broad description of your invention or inventions to see if he or she may be representing another inventor whose work might create a professional conflict with your invention.
2. Keep in mind a registered practitioner is ethically bound to treat your information as confidential, so discuss what you would like.
3. Your first interview with a candidate may be by phone or in person. Early screenings on the phone are OK and can be fast and weed out the people you don’t like in a hurry. Screenings are generally in greater depth when in person.
4. If there is no conflict, describe your invention in greater detail, and ask the candidate what aspects of your invention might be patentable.
5. Ask how many claims they think might be in your patent application, and how strong the claims are.
6. Judge attorneys by their understanding of your invention. How fast or how well did they grasp it? Make them explain it back to you.
7. Judge what kind of recommendations they made. A good practitioner will be open, and will tell you most everything. Are they candid with their answers: was getting information like pulling teeth – or did they speak freely. Remember – if you need to defend your patent in court you will be dealing with this person over the long haul. Make sure you are comfortable with him or her.
8. Ask for his/her hourly rate.
9. Ask the approximate number of hours in each part of the patent process.
10. Ask if they have an area of expertise in their practice (certain types of products or certain kinds of patents.)
11. Ask if they have types of clients like you (some patent firms handle only large corporate accounts such as gas companies or electrical engineering or design firms.)
12. Ask for a few samples of the patents they have recently completed.
13. Ask for an estimate of the costs for proceeding with seeking patent protection. Have the costs broken down – who gets what. Separate government and filing fees from hourly rates, from drafting drawings costs.
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.
14. If it looks good so far and you are thinking about hiring them, ask for a few recent clients you may contact for references. If they are reluctant to provide any or actually don’t have any, this may be an answer in itself.
15. How did they handle the questions? And how did they handle YOU while they were handling the questions? If you have ANY concerns about their ability to handle your invention, and/or you and your account the way you – the paying client – would like to be treated, thank them for their time. Say that you’d like to think about it, and then interview other candidates.
If you want to find another candidate in your geographical area who might be better equipped to handle the patent and protection of your invention, or provide better service to you (and remember it is a service you are buying) you’ll find a list of registered Patent Attorneys and Agents on the Patent Office Web Site (www.USPTO.gov), which can be searched by name or by location.
If you want to see patents that a candidate has written, you can also search the full-text copies of recently issued patents to find patents which list the candidate as the attorney/agent of record.
There are several Practitioners (Registered Patent Attorneys or Agents) who have served on the Board of the American Society of Inventors. They are open to your questions.
Henry Skillman (deceased) was a grand old guy and a dear friend. He was also the senior partner in the law practice of Dann, Dorfman Herrell and Skillman, LLC, specializing in proprietary intellectual rights, patents, trademarks and intellectual patent litigation, and a long time active Board of Directors member of the American Society of Inventors.
Jeffrey Dobkin is the President Emeritus of The American Society of Inventors, having served on the Board of Directors for more than 14 years. He can be reached at 610-642-1000, or by email at Jeff@Dobkin.com Dobkin has written 5 books on marketing and direct marketing; his articles on marketing have appeared in more than 300 magazines.