Patents

How do you best evaluate a patent attorney? Has anyone worked with one they recommend and why?

Daniel Weisman Head of Office at The Weisman Family Foundation

June 13th, 2014

How do you best evaluate a patent attorney? Has anyone worked with one they recommend and why?

Robert H Lee

June 13th, 2014

I should add, probably the easiest thing for a technical person to do is to make sure the patent attorney simply understands your technology. And maybe have him or her draft a claim or two for you and explain to you why the claim is broad and defensible. But other than that, client recommendations are probably the best way to go.

Robert H Lee

June 13th, 2014

It's not that easy to evaluate one because patent drafting is a pretty subjective art. There are many ways to draft a good one, and even more ways to draft a bad one. You can try to get metrics on % of patent successfully allowed and/or litigated. but these can be very hard to come by. I can make a few recommendations if you like, if you tell me your field.

Satyajit Patwardhan CEO at Green Dot (Transportation) Inc.

June 15th, 2014

Here are my 2 cents:
- Have the "candidate attorney" read your first draft of "description of invention". Let him/her ask you question as well as you ask him/her questions to ensure that he/she has got the core innovation of the patent. Ability of the attorney to understand this core and that he/he has got it is probably the most important pragmatic marker you can get. In my opinion, the actual drafting of claims is relatively straightforward with this understanding + the standard legal training + a good logical mind.
- Note it is recommended that you put down the first draft of at least the "description" part of the patent application before you look for attorneys. This will help to you clarify the subject for yourself and for the attorney.
- I went through retaining 2 attorneys for short period of time and burning $2K in the process before I found  my attorney "Sunil K. Singh" (SF Bay area). His strength is in his sharp mind to understand complex technology and zero in on the core of technology as well as objections raised by the examiner.
- I was (with my attorney) eventually able to defend all of the examiner's objections and get all of my intended claims accepted.
- Finally, please focus on "description" of invention when you first apply. Make sure to include all possible variants here in plain English. Wording of "claims" is less important in this round as long as you have all the matter covered in "description". You are allowed to completely re-write the claims later on as long as they are within the scope of what you described in the first application. In my mind the general split is that you - inventor should do your part of writing good "description" (anyways, attorney's can't really be helpful there), then bring an attorney on board for claims.

Brad Bertoglio Attorney and Senior Executive

June 16th, 2014

All of these comments are great.  Other tips on selecting a patent attorney:

At a minimum, your prospective attorney should quickly be able to parrot back, in his/her own words, what your invention is accomplishing.  That helps show the attorney understands it.  But even better if they are taking your concept and pushing its limits -- asking you about other potential use cases, other ways of implementing the invention and variations on your idea.  When you are working REALLY well with a patent attorney, they're not just a scribe.  They should be pushing your thinking about what the invention really is.  This helps ensure you are capturing the full potential of the idea in the patent process.  

Also, you may want to look for somebody who focuses on working with startups and growth-stage businesses.  Aside from drafting a quality application, there are a lot of strategic decisions involved in building a patent portfolio.  And the best course of action will often be completely opposite for a Fortune 500 company versus a startup.  Which means there are a lot of really bright attorneys drafting high quality patent applications, who would NOT be the best choice of counsel for a seed-stage startup.  Talk to your prospective attorney about where your business is right now, and where you see it going.  Do they understand the stages your business is going through in terms of product development and achieving product-market fit, competitive landscape, evolution of your market, capitalization, investor priorities, etc.?  The patent strategy may evolve over time, but a patent attorney that is savvy in your technology and business stage should be able to very quickly articulate a patent strategy that aligns well with your broader business strategy.  

Lastly, re: the idea of trying to draft the body of the patent application before you meet with an attorney: this can be very beneficial if you can and want to invest the time to study a lot of patent applications and get a feel for how they are drafted.  Otherwise if you don't want to invest time in learning how patents are drafted, focus on drawings.  If you can sketch out flow charts and block diagrams that illustrate your invention, it's relatively quick/easy for a good patent attorney to put the right words around it.  The hard part is figuring out the best way to conceptually convey the invention in the first place.  Good illustrations from an inventor can help immensely.

Anonymous

June 13th, 2014

I really recommend search FD:Discuss before posting, just a ton of great discussions on this already.

Daniel Weisman Head of Office at The Weisman Family Foundation

June 13th, 2014

It would be Telematics/ Big Data. I know there's a ton of telematics patents out there, but this would be an extension beyond with application to a new industry.

Leena MBA Content & Publication Manager at NetApp

June 13th, 2014

I recommend my counselor, Jon Stechmann, who has filed patents himself, for his own ideas. He works at an excellent AM 200 law firm -- Oppenheimer, Wolff & Donnelly. Message me for details if interested.

Scott Milburn Entrepreneurial Senior Executive and Attorney

June 13th, 2014

Adam Phillip in Seattle is great. He has a firm, AeonLaw, that specializes in startup/early stage technology company patent work. www.aeonlaw.com. I believe he is also an FD member.

Robert H Lee

June 13th, 2014

Ron Rohde in Silicon Valley would be excellent at this. He is a solo guy:
r2nolo@yahoo.com

Here's another one in Seattle you might consider:
http://rimonlaw.com/team/ronnie-stern

Rob G

June 13th, 2014

Daniel, not much different than evaluating any other professional service provider: experience, reputation, trust, compatibility (work style, communication style, etc.), cost, billing practices, etc.   get references.  If you are filing methods patents in the area of software, for example, you will want an attorney who has a CS degree or EE who understands software dev and can speak your language - s/he needs to translate your language into patent language.  You can search USPTO.gov by attorney (don't quote me on that) and talk to the inventors.  Also depends on what you want to get out of your patents - some marketing millage to say "we have patents" or do you want strong patents to defend your market and/or defend against legal action?  If you want strong patents VS just marketing patents then talk to the references about how this attorney prosecuted their applications.  Strong patents takes a smart attorney that is willing to go toe-to-toe with the examiner and make as few modifications to claims as possible.  An inexperienced attorney will respond to office actions by modifying /  weakening claim language.   Standing up to the examiners takes time and $$$ so you need to agree on prosecution strategy. There is also patent portfolio strategy so the better attorneys can help you with this - has to do with types of claims, number of applications (1 VS many), do we allow some claims now and continue to prosecute others?, keeping continuations in play, do we push for allowances as fast as possible or take our time to let the market develop? ,  etc.