A patent attorney can help companies and inventors gain patent approval and protect their intellectual property. However, it is important to work with a qualified and experienced patent attorney to ensure the best chance of a successful outcome. Look for the following when choosing a patent attorney:
Make Sure You Choose A Qualified Patent Attorney
For all patent-related matters, it is important to specifically choose a patent attorney rather than a general attorney. This attorney must be qualified and registered to practice before the U.S. Patent and Trademark Office (USPTO). In addition to possessing a law degree, they must also have a technical background in science and have passed the patent bar exam which is administered by the USPTO.
Although some general practice firms may have a patent attorney working within their group, many inventors prefer to work with specialty firms that are dedicated to intellectual property matters.
Choose a Patent Attorney with Fundamental Knowledge in the Field of the Invention You Wish to Patent
Patent attorneys typically have expertise in different scientific areas related to inventions, such as computer software, plants or physics. Ensure that you choose a patent attorney who is experienced in the field of your invention.
Researching, claiming and representing your rights to your invention is a very technical process, and you need to ensure that the patent attorney you choose is able to do so effectively and cost-efficiently. If your patent attorney does not understand the technical field of your invention very well, they may not have a solid understanding of the competitive nature of the market, which could result in insufficient protection.
Choose a Patent Attorney Who Can Manage Litigation
When meeting with prospective patent attorneys, it is important to confirm that they litigate patents. Some intellectual property firms are dedicated solely to filing patent applications and helping inventors get them approved.
However, it is best to seek a firm that can also successfully manage patent litigation and is prepared to enforce and defend your patent in court. In addition to confirming that they handle litigation, be sure to inquire about their litigation history and success rate.
Learn More About the Firm’s Reputation
In addition to ensuring the patent attorney you choose has the necessary expertise, it is important to consider the reputation of the firm as a whole. Support staff and junior associates will likely be assisting with different aspects of the process, having a firm that has an excellent reputation for going above and beyond in handling your case and staying on top of communications should be preferred.
Consider Their Experience with Foreign Filings
If you are interested in filing your patent application internationally, or there is any chance that you may need to do so in the future, it is important to determine the level of experience with foreign filings of any firms you are considering.
Be sure to ask them how many international patents they file every year and whether they have relationships with other intellectual property firms within the jurisdictions you intend to file, or are familiar with the patentability requirements in those countries. It is also a good idea to find out the typical costs that are involved in filing foreign patents.
Find Out Whether They Have Experience with Other Intellectual Property Matters
There are many other aspects to intellectual property law beyond patents. For people who need to protect a one-off invention, an attorney focusing solely on patents may be sufficient. However, regular inventors and businesses that anticipate ongoing related needs should find out whether the firm they are considering has experience with intellectual property matters such as nondisclosure agreements, freedom to operate analysis, trade secrets, patent valuation and sales, copyrights, trademarks and software licensing.
Be Sure to Meet the Attorney Who Will Draft the Patent
The attorney that you first meet when discussing your case with a prospective intellectual property firm is often not the one who will be in charge of drafting your patent application. Make a point of asking which attorney will be drafting your patent and arrange to meet them. This may not be possible at your first meeting, but it is something that you should strive to do before making a decision.
This allows you to make sure the attorney who will be drafting the application is conversant in the right technology when you disclose your invention to them and understands what is involved in it so that they can make a successful application. Choose an attorney who asks you insightful questions that demonstrate a deep understanding of your invention.
Discuss Your Case with the Intellectual Property Attorneys at Metrolex IP
The experienced Washington, D.C. intellectual property attorneys at Metrolex IP specialize in practice areas such as patents, copyrights, trademarks, franchising, due diligence and software licensing. Contact us today to set up an appointment to discuss your case.
