Finders Keepers

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.

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This article was originally published in the July 1998 print edition of Entrepreneur with the headline: Finders Keepers.

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