How To Select a Patent Agent
Selecting the right patent agent is a crucial step in the invention process. You should select a patent agent who is an engineer.
Ask the patent agent, what kind of engineer he is, how long has he practised patent law, how many patents has he drafted and for what kinds of inventions.
Choose a patent agent who you feel understands your invention.
Educate yourself about the patent process and understand as much as you can. It will help you work better with your patent agent.
One of the most overlooked factors is technical experience. The patent agent obtained this experience before becoming a patent agent. The patent agent should have an engineering or other technical degree, but not all have the same technical experience.
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.
Selecting the right patent agent is a crucial step in the invention process. You should select a patent agent who is an engineer.
Ask the patent agent, what kind of engineer he is, how long has he practised patent law, how many patents has he drafted and for what kinds of inventions.
Choose a patent agent who you feel understands your invention.
Educate yourself about the patent process and understand as much as you can. It will help you work better with your patent agent.
One of the most overlooked factors is technical experience. The patent agent obtained this experience before becoming a patent agent. The patent agent should have an engineering or other technical degree, but not all have the same technical experience.
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.
