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12 Questions to choose the best patent attorney for your invention...

Choosing the right patent attorney to draft your patent application is as important as selecting the right surgeon to operate on you.  OK, maybe not quite as important... But picking the wrong attorney can be fatal to your invention. Here are twelve key criteria for choosing the right patent attorney for you and your invention. Don’t just take the first cab off the rank! Ask some questions and find the attorney that's right for you.

© 2012 M.Lohmeyer, from "Thinking of Applying for a Patent in Australia? Ask the Smart Questions."1.) Location: It would be great to find the perfect patent attorney right across the road, but that rarely happens. Whilst there is no need to be close-by these days, the ability to get together face to face at regular intervals is important, particularly in the early stages of crafting a patent application. Proximity is also handy at the later stages when you need to prepare your attorney to argue the merits of your case with patent examiners around the world.

2.) Time: If you are very time constrained or do not wish to invest a lot of your own time into managing your IP affairs, make sure you appoint a very experienced attorney who can take care of your case without any unnecessary recourse to you.  If you really do not wish to become involved in the patenting process beyond the absolutely necessary, you could always retain a commercial advisor to instruct the attorney on your behalf and perhaps to sell or license your invention to a third party at an early stage.

3.) Money: Patenting is an expensive process, but if you believe in the commercial success of your invention, you should invest in the best possible IP protection you can afford.  As with most things, you generally get what you pay for.  The first provisional application is the most important document in the patent process, because all of what you can claim ultimately goes back to that document. If you ask for a provisional patent ‘on the cheap’, you will in all likelihood get a document that was written by a trainee patent attorney working in the firm, with minimal time spent by a more senior attorney. Always insist that the work is done by an experienced attorney or with the involvement of an experienced attorney, ideally a principal, partner or senior associate of the firm.

4.) Experience: There is a direct relationship between attorney experience and their charge-out rate, i.e. the money you'll be asked to pay. Here is a rough guide to the seniority of the people you may be dealing with, based on decoding common job titles you may encounter in Australia:

  • Patent scientist/technical specialist/trainee attorney: usually denotes a scientist training to become a patent attorney, but not yet fully qualified.
  • Patent attorney: usually a junior Australian patent attorney or an overseas-qualified attorney beginning to practice in Australia.
  • Associate: usually 4-6 year’s experience.
  • Senior Associate: 6-10+ years’ experience.
  • Principal / Partner: the top dogs in any law/patent firm, and therefore the most expensive! You should ask your attorney how they manage your work and who will be involved.
There should be a balance between the cost effective use of resources and your need for experience and technical understanding. What level of experience do you need and can you afford?
5.) Expertise: Experience is not the same as expertise, although both are important. If you can find an attorney who has filed a number of patent applications in areas similar to yours, you are also tapping into a vast pool of subject matter knowledge around your patenting area as well as, potentially, a network of relevant industry contacts when it comes to commercialisation. To find out about an attorney’s technical expertise, ask for specific examples of similar technologies they have patented. If you have found a number of relevant patents on the database, look up the attorneys who managed those cases. Sometimes you can access years of valuable expertise in your area, paid for by others, simply by selecting the right attorney. Obviously large firms with many attorneys are more likely to have filed patents in your field, but many smaller firms or individuals also specialise in certain areas of technical expertise.  The key is to do your homework and match your attorney to the technical area of your invention.

6.) Independence: The downside of finding an attorney who has great expertise in an area very close to your invention may be that he/she (or the firm more generally) is also looking after IP that may compete in the market place with yours.  If there is an immediate conflict of interest, the attorney must tell you in advance, but sometimes the conflicts only arise at a later date when someone infringes your patent and you want to sue.  Most firms will have a ‘conflicts’ policy.  If you think this might apply in your case, the best thing to do is to ask about your position. What you don’t want to happen is to have to find another IP firm when it comes to enforcing your patent.

7.) BrandSome firms are known for their aggressive infringement prosecution, others are biotech experts, others specialise in local work for overseas clients, others combine several of these areas, etc.  Most patent firms have a reputation and manage this together with their brand.  If a particular brand is important to you, then selecting the right firm can be a great asset.  Using a well-known firm with a good reputation can provide added credibility with potential partners, investors or licensees.  Of course, you still need to make sure you get the right attorney, whatever firm you choose.  As in the supermarket, the bigger the brand, the more choice you have and the more expensive the products tends to be. Choose smartly.

© 2012 M.Lohmeyer, from "Thinking of Applying for a Patent in Australia? Ask the Smart Questions."8.) Back up: The patent process is driven by tight deadlines. Particularly in the later stages of the process.  If your regular attorney was unavailable for a time, perhaps due to a lengthy court case, overseas trip or illness, is sufficiently expert back up available in the firm to look after your case?  If not, how would your attorney look after your case in a crisis?

9.) Overseas NetworkIf you are only filing applications in Australia this does not apply to you. If you are aiming for international coverage, your Australian attorney will need to use overseas patent attorneys to manage your case in all of the different countries.  Being able to access technically competent and experienced attorneys in a cost-effective manner will impact directly on the quality (and cost!) of your overseas protection.  Discuss with your attorney how they will access and select such ‘foreign associates’.  You are looking for a range of established relationships which can be drawn on to service your interests most effectively, whether they be technical ability, reputation, location, cost or other factors. Ask the question and compare.

10.) Legal Support: Patenting is only one aspect of looking after your invention.  Some patent firms have their own legal teams to assist clients with the many specialist legal agreements that are required to license, assign or otherwise commercialise an invention. It is important that your lawyer works closely with you and with your patent attorney to resolve any legal issues which might arise. If your preferred firm does have an in-house legal team, does that team have expertise in the way you want to commercialise your invention? If your preferred firm does not have the right in-house legal support, have you got access to the right legal support elsewhere?

11.) Commercial SupportPatent attorneys will look after your IP, lawyers will look after the legal agreements, but who can help you to look after the business side of your IP?  Unless you are experienced in the commercial arena yourself, it pays dividends to work closely with someone who can help you to commercialise your invention. What’s your marketing strategy? Who will you contact? How much should you sell for? What conditions should you attach? What’s a fair royalty rate?  All these are questions that can best be answered together with an experienced commercial adviser who takes the time to understand your business, what you want to achieve, helps you to define the best strategy to get there, and will then work with you every step of the way to help make your invention a success.

12.) Personal RapportThe patent process is a long haul.  You will be spending a fair amount of time with your attorney, your lawyers and your commercial adviser over the years.  Once you have found an attorney to match your desired combination of all of the above factors, ask yourself: can I work together with this person? Do we communicate effectively? Do we understand each other? It’s usually best to find someone you respect and with whom you get on well.  That’s not quite the same as someone who shares your enthusiasm for your invention.  In fact, my suggestion would be to work with a team of people whose judgment you respect and who are not afraid to pressure-test your assumptions, to disagree with you and to be devil’s advocate.  You will reap the benefits of their experience and probing down the track.

If you are satisfied on all of these 12 key issues, you can rest assured that you and your invention are in good hands.

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This article is a short edited extract from:

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