5 Things To Look For In A Patent Attorney

Entrepreneurs commonly have new ideas, concepts or inventions in the early stages of their venture and need the counsel of a patent attorney to better access what can be protected, help with patent searching and help with writing/filing a patent. Here is what I came across as I discussed this topic with professionals in the field...

1) Registered with the United States Patent & Trademark Office: Search here for Registered Patent Attorneys and Agents. They should have a five digit number with the USPTO if they are registered.

(Check out inovia.com and wipo.int for info on international protection and foreign filing).

2) Field Specific Experience: They should have experience in the field or technology you are pursuing a patent in. Ask them what field if any they specialize in. This will ensure that they understand the terminology, writing, technology and other aspects of the specific type of invention you are trying to get patented.

3) How long they have been in the practice: Ask or research how many years they have been in this practice of law or writing/filing this specific type of patent(s). Experience is good but this doesn't mean a new attorney would not be able to provide adequate service.

4) Success: Ask how many patents have they or their firm filed successfully, with a Non Provisional Patent being granted (usually Utility). If they are a new attorney or a new practice you will not see the same results as in an established firm, with a higher number of patents granted if they are established. The most patents granted by the top 5 U.S. firms in a two year period (ending in October 2010) are...

1 Fish & Richardson P.C.   9718 Patents Granted
2 Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.  8133 Patents Granted
3 Oliff & Berridge, PLC   6247 Patents Granted
4 Sughrue Mion, PLLC  6205 Patents Granted
5 Birch, Stewart, Kolasch & Birch, LLP   5523 Patents Granted
Number 10 on the list, Townsend and Townsend and Crew LLP with 2956 Patents Granted


Examples of specific successful patents are important as well and tie into how many have been granted. What patents are now developed into successful companies, products and services? This could be encouraging information if some of their patents have led to successful entities. A study done, however, showed that only 6.5% of inventors actually ever sell their invention. But, it also showed that independent inventor's patents are eight times more likely to reach the market when compared to patents granted to an established firm. (Basic Statistics on the Success Rate and Profits for Independent Inventors)

5) Intangibles: Certain qualities can't be shown through numbers or data. Qualities like creativity, professionalism and willingness to work with clients. These will all help with the write up of the patent, the relationship you have with your attorney and the interaction you have with him or her in the process. These factors can all help in the overall process of filing a patent.