How To Select a Patent Agent

Selecting the right patent agent is a crucial step in the invention process. Your patent will only be as good as the patent attorney drafting it.

You should select a patent agent who is also an engineer. Both skills are needed to construct a good patent document.

You should select a patent agent whose engineering background relates to the field of your invention. There are four types of engineers, mechanical, chemical, electrical and computer science.

Ask the patent agent, what kind of engineer he is, how long has he practiced patent law, how many patents has he drafted and for what kinds of inventions.

Only choose a patent agent who can give you a quote for what the entire bill will be. They will have to inspect your invention first. Ask how the payments will be arranged.

Trust your intuition and only choose a patent agent who you feel understands your invention.

Interview different patent agents until you have made your choice. You will be working with this individual for 2 to 3 years.

Most reputable patent agent charge between $2,000 to $7,000 for a well-drafted patent application including the drawings and filing fee. Anything less than $2,000 should be scrutinized.

Educate yourself about the patent process and understand as much as you can. It will help you work better with your patent agent.

You could hire a patent agent instead of a patent lawyer, but the patent agent will not be able to litigate for you if any infringement issues arise.

Never deal with a salesperson, in choosing a patent agent always deal directly with the patent agent.

One of the most overlooked factors is technical experience. The patent agent obtained this experience before becoming a patent agent. All patent agent should have an engineering or other technical degree, but not all have the same technical experience. You want a patent agent that has technical experience that matches your technical field of your invention. If you have a software invention, look for a computer or electrical engineer with experience writing software. If you have a mechanical invention, look for a mechanical engineer with experience building widgets. One question to ask is whether the patent agent has a resume sufficient for you to hire them in an entry level or higher technical position in your company. If not, they probably shouldn’t be writing your patents.

The is little difference between large law firms and solo firms. It is a bit like asking who has smarter engineers, a large company or a startup. There are smart engineers at both for different reasons, and there are just as many reasons why patent agents choose to work in different environments. At the end of the day, you are hiring a specific patent agent that will write your patents. At a large firm, it is more likely that an associate in training will write your patent with an experienced partner reviewing their work (many firm partners only supervise work and no longer write patents). You often only meet the partner and may only see who worked on your patent on the bill. At a solo firm, the patent agent you meet will also write your patent. Having done both, I would rather have the person with the most experience spend their time on my patent. To use a surgical analogy, it is better to have an experienced surgeon perform the whole surgery than to have a resident operate on you with a supervisor popping in for a few minutes at the end. Going back to technical experience above, make sure you know who is actually working on your patent and that person’s level of experience.

Although patent costs vary from firm to firm, one thing I would consistently suggest is to select a patent agent that will give you an accurate picture of the costs up front, and will commit to a cap on the total bill for filing your application. Hourly billing is particularly difficult for the client, because it gives the client very little upfront knowledge about how much a particular patent will cost, and unfortunately many clients often feel like the “clock is always running”. At large firms each attorney may have a different hourly rate and some will be faster than others, making it nearly impossible to know in advance how much anything will cost. I prefer flat fee billing because it gives you the clearest picture of the costs involved so you can plan effectively. Flat fee billing is a recent trend for law firms, and most old firms still use hourly billing.

The process of getting a patent through the Patent Office is referred to as prosecution. One of the best ways to evaluate a patent agent (and the most difficult bits of information to find) is the agent’s success in getting patents through the Patent Office efficiently. Many clients that come to me after firing other firms have done so because the other firm has spent years in prosecution without making substantial progress. This can happen because the application was not written well in the first place or because the attorney is just ineffective at working with patent examiners.