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

Just curious, what does spending $5-$10k get you on securing a patent? If some large company wants what you have your recourse is to sue? Good luck. They'll run you out of money.

Anonymous

June 13th, 2014

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

Rob G

June 13th, 2014

$5k-$10k doesn't really get him started. 10x that gets you some decent ammunition. without ammunition you have zero chance in battle.  if a big company wants his patents they may offer to purchase or license them.  If they want to ignore his patents and infringe then he has the option to fight if he has patents. no option to fight without them.  I would presume that Daniel's plan would be to file for patents, grow his business and assuming his business gets 'big' and he is awarded patents then at least he has the option to fight if he chooses.  with deep pockets and patents he has a chance.  With patents and no deep pockets he would need to enlist the services of patent attorneys willing to fight on a contingent fee basis - often referred to as "trolls".  With no patents he has no legal basis to fight. 

Tim Parks VP of Growth at UpCounsel, Inc.

June 16th, 2014

Some great points by folks above.  As with any professional service provider, you want to make sure that you feel comfortable and trust the people you are working with.  Full disclosure that I work at a company that has a network of attorneys, many of whom help startups with patents.

Here's a link to a bunch of profiles of vetted patent attorneys where you can read reviews of past clients.

https://www.upcounsel.com/attorneys/?pageNum=0&cat=1&sorting=NumberOfJobsCompletedDescending&patentAgentsOnly=false&state=CA&areaId=51b356505a8ceae10efe2fa1

if you have any questions, feel free to send me a message and we'd be happy to help.

Daniel Weisman Head of Office at The Weisman Family Foundation

June 13th, 2014

Los Angeles, but I work very well remote.

Daniel Weisman Head of Office at The Weisman Family Foundation

June 15th, 2014

@D. Steven Daniel, Ph.D. - In general, I agree with you... and it's the rare case like Dr. Gary Michelson where the small guy can survive to the payday.

@Rob - You're exactly right, plus one other component: My business is a network effect data-based company and the patent would help convince my potential data partners to work with me as they would directly benefit as client/ partners from the patent... and we're clearly the first/ most knowledgeable because we have filed for the patent.