Levy’s Rules for Hiring a Patent Attorney
Consider the following points when retaining counsel. Read them carefully; they could save you time and money:
Be sure your patent attorney is registered by the Patent and Trademark Office. The USPTO keeps a register of 9,339 active agents and 28,933 active attorneys qualified to practice before it. To be listed, a person must comply with the regulations prescribed by the USPTO, which requires proof that the person is of good moral character and of good repute, and that he or she has the legal, scientific, and technical qualifications necessary to give inventors valuable service. Individuals much demonstrate certain qualifications by passing an exam. Those admitted must have a college degree in engineering or science, or the equivalent of such a degree.
To find a patent attorney or patent agent in your city or state licensed to practice before the USPTO, go to https://oedci.uspto.gov/OEDCI.
In actuality, far fewer people are practicing patent law than it would seem from the list. The USPTO list may contain lawyers and patent agents who have gone to the other side of the grass or are no longer in business.
Hire a patent attorney who’s a specialist in your technology. You wouldn’t want a dermatologist to do your heart surgery. Nor would you want an electronic patent specification written by an attorney whose specialty is mechanical engineering. Satisfy yourself of the lawyer’s expertise. Interview more than one candidate. Patent counsel should be able to help you broaden your claims by probing your mind to be sure you’ve considered all possible embodiments and improvements. Only those versed in your field of invention will be able to do this effectively.
Be wary of lawyers who pitch themselves as agents to help sell your invention. You’re hiring patent counsel, not a salesman.
Hire patent counsel who understands the ins and outs of The American Inventors Protection Act enacted November 29, 1999, as Public Law 106-113. This is complicated stuff for the brightest of them.
Notable Quotables
When patterns are broken, new worlds can emerge.
—Tuli Kupferberg, poet and freeformist
Shop around. It’s a buyer’s market. If the lawyer is inflexible, go elsewhere.
Request an estimate. Patent attorneys are able to give close estimates when they understand the scope of work. Once you have an acceptable price, ask your attorney to agree in writing and cap it off. Otherwise, you may find your budget busted. Make a package deal whenever you can. You are selling money, not buying services.
Don’t embarrass yourself by insisting that the lawyer sign a confidentiality agreement before you’ll disclose your invention. Patent lawyers don’t steal ideas. If you’re preoccupied about this, get over it. It’s unethical for a patent lawyer to steal ideas, and it’s a great way to get disbarred.
Know who will do your work, especially if you’re dealing with a large firm. The big firms need litigation and hefty retainers to make money. They don’t make enough to pay the light bills drafting claims and prosecuting patents for independent inventors.
You want to be important to the attorney. Years ago, I found one lawyer putting our work on hold while he took care of business for a more senior attorney at the firm. You also don’t want your work rushed. Thought must be given when going for as wide a set of claims as possible. Be sure your work won’t be farmed out to a less experienced attorney in the firm.
Bright Ideas
In the early 1920s, R. A. Watkins, owner of a small printing plant in Illinois, was approached by a man who wanted to sell him the rights to a homemade device made of waxed cardboard and tissue on which messages could be printed and then easily erased by lifting up the tissue. Watkins wanted to think about the proposition overnight and told the man to return the next day. In the middle of the night, Watkins’s phone rang; it was the inventor calling from jail. The man said that if Watkins would bail him out, he could have the device. Watkins agreed and went on to acquire both the U.S. patent rights and the foreign rights to the device, which he called the Magic Slate.
If possible, hire your own patent searcher. Lawyers don’t search patents. They hire specialists to do that for them and then mark up the bills. Large firms typically have people on staff who go to the USPTO every day; others use freelancers. You’ll save a lot of money making a direct hire. (See Chapter 12 for more on hiring patent searchers.)
If the attorney allows you to handle this process, he may ask that he be indemnified from problems that could arise from a less-than-satisfactory search. For example, your searcher could miss a key piece of prior art. Your attorney also won’t render a written opinion unless you pay extra for it.
I look at it this way: if I hire a highly qualified searcher who also does work for the law firms, then I am willing to take that risk in return for the savings. I usually do not need a written opinion to figure out if the prior art precludes me from getting protection. The search results will show this. But if I do need an opinion, I pay for it.
If possible, hire your own patent draftsman, too. Lawyers don’t draw. They hire specialists and then mark up their bills. Larger firms frequently have draftsmen on staff; others use freelancers. Here, again, you’ll save money if you make the call.
If several lawyers show up for a meeting, ask who they are, what their purpose is, and whether you’re paying for them. If you are, be very sure they’re needed. One lawyer should be capable of handling the patent.
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If you want to file a formal complaint against a patent lawyer or agent registered to practice before the USPTO, contact the Office of Enrollment and Discipline at United States Patent and Trademark Office, Box OED, PO Box 1450, Alexandria, VA 22313-1450; 571-272-4097; fax: 571-273-0074.
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