Selecting a Patent Professional

Selecting a patent professional to help you prepare a patent application(s) for your invention, and to represent you during prosecution (examination) of the patent application before the United States Patent Office, is an important decision. Patent practitioners (patent agents and patent attorneys) come in a variety of characters and approaches. Depending on your situation, your skills, your involvement level, your time, and a variety of other factors, you will likely find that it is easier and more productive to work with a patent practitioner that understands and is willing to work with your approach to patents.

However, there are some basics common to all good patent practitioners. All will strive to make sure that you receive the most value from their services, including continually improving their expertise in patent application law and practice, seeking to help you receive strong patents for your patentable innovations, and educating you so that you can make the best decisions possible.

These questions are provided as a framework that will help you select a good patent professional that fits your business and goals. Some of the questions help you identify a good patent professional. Some of the questions help you determine if the patent professional is a good fit to represent you and your company. Some of the questions help you do both. Please adjust the questions as necessary for your situation and goals, and add questions that are important to you and your situation.

Of course, if you are looking for a patent professional please feel free to contact us at Bold Ventures Patents, and ask us these questions. We’d love to have the chance to help you!

Expertise

How do you stay abreast of current case law?

Like much of law, patent law is heavily influenced by the cases decided by various courts (especially the Court of Appeals for the Federal Circuit and the Supreme Court), and changes to regulations and protocols by the United States Patent Office. Thus, as a legal professional, it is imperative that a patent professional methodically keeps up to date with current case law. Various feeds provide updates and analysis of current laws and regulations and current court decisions. A thorough patent professional will adjust their drafting, claiming, and prosecution practices accordingly in order to maximize the value of patent applications, and the likelihood that they will not only be granted, but withstand potential scrutiny in the event of enforcement of the patent.

What is your experience in this field?

It is not necessary that a patent professional have extensive knowledge of the field of your innovation. However, it is very helpful if they have some familiarity with the general field, or a similar or related field. A level of familiarity allows the patent professional to more rapidly understand your innovation, and to more quickly define the boundaries of your innovation in relation to the prior art.

Follow-up question:

How do you approach a field that you have less or no experience in?

If the patent professional has limited or no experience in a field related to your invention, this is not an automatic rule-out – you are hiring a patent professional primarily for their legal expertise, combined with an ability and background to understand technical matters. Instead, try to ascertain how the patent professional will gain the necessary familiarity with your field of art. Do they research? Will they interview you extensively? How do they go about determining what is ‘standard’ or ‘known’ in the field so that they don’t run the risk of either under-valuing your innovation, or of over-valuing your innovation and describing it too broadly?

Do you have samples of previous work?

(preferably in a related art)

Review samples of patent applications, granted patents, and the prosecution history (the back and forth between the representative and the patent office) of past cases. Even if the patent professional doesn’t give you samples, you can typically find examples online through a service like Google Patents, Free Patents Online, the US Patent Office application search service, and Public PAIR (through the US Patent Office). They cannot give you confidential information, but applications that are published are public record.
Look to see whether the applications show both breadth and depth. Does the specification not only discuss minute details about the inventions, but also provide multiple variations of the invention and potential alternative uses? Are the claims clear? Does the prosecution history indicate that the patent professional is courteous and thorough, and that they are willing to conduct interviews with the Examiners and to propose careful amendments to navigate around prior art? Reviewing past work gives you the opportunity to gain an insight into the experience and practice style of the patent professional, and help you to determine if they are a good fit for your business and for representing you and your innovation before the US Patent Office.

Approach

Is my invention patentable?

A patent professional should very rarely (or never) give you an absolute answer to this question. A knowledgeable and helpful patent professional, however, will systematically approach this question by discussing what problem is being solved (i.e. what have you actually invented), and discuss how it is already being solved (i.e. what is the prior art), and then discuss potential costs of obtaining a patent, potential difficulties that might be encountered in the patent process. Ideally, they will then encourage you to consider the potential market for your invention, the expected cost of bringing your invention to market, potential routes (and your availability and commitment to pursuing them) to commercialize your invention, and the potential return you might be reasonably able to expect from your investment in patent protection.
A definitive answer of yes, at best, borders on rash overconfidence, and at worst, indicates a heedlessness of your best interests in order to gain work. A definitive answer of no, indicates that the patent professional may not be interested in working with your invention and may not be ready to give your patent application the best opportunity possible.

Should I try to patent my invention?

The right answer to this one is a question! A wise and careful patent practitioner first response to this question is typically going to be to ask you “what are your goals?” Do you just want a patent to prove you are inventive? By all means file an application … you can almost always get something allowed! Are you trying to launch a startup from a single application with no funds for extended prosecution? You probably need a good chance at quickly obtaining a strong patent. Are you looking to build a patent portfolio to give you space to build a long-term company? Applications that can mature into multiple patents with incremental coverage of various aspects — functional and aesthetic — can help give your company a strong position.

Ultimately, a patent professional should try to understand your business goals, some about what problem you are trying to solve, what audience you are trying to solve it for, and how you intend to go about commercializing your invention, before giving you — not a firm answer — but guidance and advice that gives you the information that you need to make the decision.

How do You Handle Patent Office rejections?

Every rejection is different; however, common principles apply to all. A patent professional should have a somewhat systematic approach to handling rejections from the Patent Office. Two things in particular to look for is their use of interviews, and their approach to claim amendments.

In particular, if they don’t mention their use of interviews, you should ask their opinion of Examiner interviews. Interviews are not always necessary, but they are typically an excellent way to expedite understanding the Examiner’s concerns and approach, and provide an excellent opportunity to tailoring the arguments and amendments to the key concerns of the Examiner. Often, interviews can reduce prosecution time (and, thus, cost!) significantly by reducing the number of times an application is rejected.

While many Examiners can be difficult to deal with, a patent professional should not view Examiners as a fundamental enemy, or as necessarily opposed to your interests (although many Examiners do view themselves this way until being reminded otherwise). Rather, Examiners and applicants (you!) are both seeking to make sure that any patent issued only covers the actual invention – your (and your patent professional) primary role in this is to make sure the patent is as broad as eligible, and the Examiner’s primary role is to make sure it is narrow as necessary (i.e. it doesn’t claim any public information). The roles are complementary. A patent professional should understand this, and work with Examiners courteously and respectfully (even with contentious Examiners!), and seek to understand their viewpoint, while representing you and your invention to your best advantage.

Additionally, a patent professional should have a balanced view of amendments to claims. Making too many amendments too quickly, especially that concede too much ground, can leave you with a narrower patent than expected or necessary – most patent professionals are very conscious of this. However, repeating arguments again and again, and refusing to take into account the experience and viewpoint of Examiners in claim rejections, and refusing to make reasonable amendments to the claims, can unnecessarily prolong time and expense, and could end up in abandonment of the patent application because of cost, when a thoughtful compromise could result in allowed and useful claims. This approach does not necessarily require abandoning broader claims: they can usually be carried on in a continuing or continuation-in-part application, if desired.

Will you help me understand the patent process?

A patent professional that is willing and able to educate you on the patent process in particular, and patent law concepts in general, is very likely to both be willing to work with you more, and have a strong grasp on patent law. A good teacher must understand the subject thoroughly in order to present it in a way that can be easily understood. A willing teacher has a desire to help you understand, and is more likely to provide you with the tools you need to to make good decisions (with their help, of course), instead of encouraging you to rely solely on them for recommendations for patent decisions. It is recommended that you work with a patent professional … but you should always seek to understand as much as possible. A knowledgeable and helpful patent professional will not be threatened by you learning, but will encourage and help you to understand as much as possible about an area that is vital to the success of your business.

What is your fee structure?

There is not a single price that covers all patent applications, all services offered by a patent professional, all experience levels of patent professionals, and all services needed by clients. However, a patent professional should be upfront and open about their fee structure, and should be able to help you sketch out an estimated budget – not only of the immediate cost, but of the potential costs you should be planning for throughout the patent application process, and hopefully through maintenance of the issued patent(s).

Flat fee pricing is becoming increasingly popular. It offers a measure of certainty in budgeting that is helpful. On the other hand, in order to cover unknowns, the patent professional must budget extra time into the flat fee – you might get a really good deal if your invention is more complex than expected, but you might also help pay for someone else’s really good deal if your invention is more straightforward to draft and prosecute an application for than expected. Some patent professionals allow you to choose between flat fee and per hour billing, and many that offer flat fee billing offer it per service – a flat fee for drafting and filing, a flat fee for each Office action response, etc.
In deciding, several important factors to consider are: Are the fees reasonable? Do you have a reasonable expectation of recouping the costs of patenting from the value of your invention (this applies whether you are looking at flat fee or hourly billing)? How important is it to you to decrease potential variation in costs?

How can I maximize the value of your services & what are your expectations of me?

A good patent professional wants you to receive the highest possible value in exchange for your investment in their services. An open-ended question like this can help give you insight into how they view the value you provide them, and what they are expecting you to do as part of the patent application process. In particular, a patent professional can point out things that you can do that will improve the quality of the patent application, while minimizing time-consuming work by the patent professional – time that you are paying for, but does not necessarily add as much value to the patent application as time spent in areas that require their expertise.

Follow-up question:

Can I help write beginning drafts of parts of the application?

If a patent professional doesn’t specifically mention parts of the application you can be involved in, and you are willing to devote time to the patent application, this is an excellent question to specifically ask. In this case, you want to find a patent professional who sees the value in you drafting the detailed descriptions of your invention, in thinking of multiple variations, in searching out details they might think should be included in the application, and in writing brief descriptions analyzing prior art. A patent professional who is willing to cooperatively draft an application like this will see the value in you providing a good base to start with, while the patent professional can spend less time doing background research and typing, and a greater portion of their time organizing the materials you provide into a strong patent application, taking into account the format, the legal nuances and language, and other details that can greatly affect the quality of any potentially issued patent.

Note that, depending on their experience, many patent professionals may respond negatively if they think you want to actually draft the application – why hire a professional if you want to do it all yourself? Please make clear to them that you understand the value of them preparing the full document, but that you are willing and able to do a lot of background research, description, and writing to provide them materials to make their job easier … and more efficient. On the other hand, this helps screen patent professionals who prefer ‘lay-persons’ to have minimal involvement, and so may not be the best fit for working with you and representing you before the US Patent Office.


This document is provided as a courtesy of Bold Ventures Patents, and is strictly for educational use. It is not legal advice, and does not create an agent-client relationship. Please contact an appropriate professional for advice and questions relating to patents, intellectual property, legal matters, and business planning.
This document is provided as-is. No warranties are provided, whether express or implied.