If you seek an attorney specializing in patent applications, there are a few questions to keep in mind before hiring. So, to make sure you choose the right lawyer to help you file your patent, we’ve put together four questions you should ask your candidates.
What is your technical background?
No matter how simple your invention may be, finding the best patent attorney to write your patent can be challenging. You should ask your lawyer questions that show you what kind of personal experience they have with the types of products you are looking to protect. They should have to ability to protect your product’s value and describe it in the best way possible. In the end, you are looking for someone that knows how to patent your idea and transform it into valued intellectual property.
Let’s say you invented a new dog toy. While various patents describe similar toys, your dog toy is unique because its design tire dogs out quicker than the others. Because of this, you want a patent lawyer with some basic understanding of dogs, how they like to play, and why there’s a market for dog toys in general. The best-case scenario would be finding a lawyer who has experience writing pet toy patents.
So, while it is essential to know where a patent lawyer went to school and what their degree is in, it is even more vital to ask about their personal experience. It would help if you gained a better sense of what they are passionate about and interested in.
Don’t be afraid to ask about their past written patents. You never know how capable they are writing outside their education field unless you review their other work.
How do you work with clients, and what is your process?
Having a lawyer help you write a patent is a collaborative process that requires a lot of communication. Ask yourself these few questions. What does this lawyer’s patent process look like? How often will I have to meet with them? Consider whether you want a lawyer to take your notes and draft a patent application, or if you would prefer that they come up with a strategy before writing any specifications.
Either way, you need to be on the same page and understand your lawyer’s process beforehand. Set clear expectations and decide if that is how you would like to work with them.
Remember that the patent lawyer works for you. They are being hired to manage and handle a project that may require involving other people. So, it would be best if you chose a lawyer that is a technical and legal expert capable of writing the patent. It’s best to find out if you and your attorney share the same ideas and thought processes sooner than later.
Who is a part of your team?
Because filing a patent is a complicated process, your lawyer will likely lead their professional team through every step. In most cases, your lawyer will also probably have junior patent attorneys or patent agents that work on their team. Make sure to ask your attorney about who will be working on your patent and why they were chosen. You can also ask your lawyer how they will be supervised and request to speak with them yourself.
Often, lawyers will hire drafting technicians to create patent drawings. You should inquire about the length of time they’ll need to make the drawings, as well as how you can collaborate with them to sketch and approve them.
Even more, you must get familiar with your lawyer’s paraprofessional support staff. It is in your best interest to know who will be filing your patent application and keeping track of the responses given by the U.S. Patent Office. It is a huge red flag if your patent lawyer plans to execute all these tasks themselves.
Make sure to remember your worth in this process, as well. You are the expert of your invention. If you want to draft some of the application yourself, or have some drawings that best resemble your product, communicate this to your attorney. Draw the lines about what roles you want to fulfill yourself and choose a lawyer with the same or similar expectations.
What experience do you have with the United States Patent and Trademark Office (USPTO)?
Law firms deeply value patent attorneys who have worked as examiners for the USPTO. They are considered expert negotiators that understand both sides of the process.
However, do not overlook lawyers that have not worked as examiners. Just keep this qualification in mind when choosing between two different qualified patent lawyers.
For example, your dog toy patent will go to the Group Art Unit office of the USPTO once it is filed because that is where they examine animal toy patents. If your lawyer worked in that office, they would have a deeper understanding of how it is run and managed. They will be able to write your patent in a way that will be best perceived.
However, it is important to know that a former examiner will not use their network of current examiners to propel your patent forward. They will only provide you with insight into how it will gain a response and write up your patent accordingly.
Because patents are crucial but expensive, it is essential to hire the right lawyer to ensure your patent will be well-written and on budget. These questions will help you ensure your patent attorney has the education, team, and experience you are looking for.
Stanzione & Associates, PLLC is an intellectual property law firm with over 30 years of experience protecting corporate entities, start-ups, and individual inventors. Stanzione & Associates, PLLC stands above other Intellectual Property law firms because of Mr. Stanzione’s extensive experience working at the United States Patent and Trademark Office (USPTO) as a supervisory level patent examiner. At Stanzione & Associates, PLLC, we have the insight and long-term relationships with the USPTO to work well with patent examiners to achieve quality patents.