From the July 1998 issue of Entrepreneur

One of the hardest tasks you'll face as a first-time inventor is finding the right attorney to file your patent. I know, because I unsuccessfully hired several attorneys before finally finding one that was right for me. The reason it's so tough is that attorneys who practice patent law are highly specialized and hard to find. To add to the confusion, many attorneys claim to have knowledge of patent law but lack actual experience. If you don't know what to look for in a patent attorney, you could be playing Russian roulette with your idea.

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 http://www.uspto.govand 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.


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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.

Another area to inquire about is how the firm handles litigation. G. Gregory Schivley at patent law firm Harness, Dickey & Pierce PLC in Troy, Michigan, believes that all patent litigation should be done by lawyers with patent litigation backgrounds. "A big red flag is a firm that forwards its patent litigation to its general litigator who has no patent expertise," Schivley says.

Don't overlook rapport between you and the attorney. I can't tell you the number of inventors who have come to me over the years complaining that they didn't get along with their patent attorneys. My question is always, "Why didn't you change attorneys?" If you don't like working with a particular attorney, you owe it to yourself and your idea to keep shopping.

A good patent attorney should also be able to give you solid business advice. If the attorney sees flaws or problems with bringing your idea to market, he or she should state them at the beginning of your relationship. Bob Chiaviello, an intellectual property and patent attorney at Baker & Botts LLP, a general practice firm in Dallas, says, "I always ask the inventor why they want a patent. If it's for nothing more than a trophy, I say fine. However, if they feel the idea is going to make them millions of dollars and I don't see it, I feel it's only fair to level with them upfront." Patent attorneys with years of experience have very valuable advice to offer. If they're willing to give it, listen and take notes.

Finally, accept referrals cautiously. I don't recommend asking another attorney for a referral to a patent specialist. Attorneys like to reciprocate with attorneys who send them business, but their referral may not be the best one for you. Also be cautious of referrals from inventors' groups. Just because one attorney has worked with many inventors doesn't mean he or she is best suited to you and your idea. No patent attorney fits all inventors.

Remember, there's no single correct way to write a patent--if writing a patent was that straightforward, inventors could write and file their own patent applications. Patent law is very complex. It takes a highly skilled and talented attorney who knows all the subtleties of patent law to create a strong patent. If you ever find yourself in the unfortunate circumstance of having to defend your patent in court, you'll be thankful you took the time to do your homework before selecting your patent attorney.