How to Select a Patent Law Firm

A challenge faced by every owner of an invention is selecting a suitable patent law firm to prepare, file, and prosecute a patent application on the invention.

Finding the names of patent law firms is as easy as a using your favorite internet search engine. But once you find a list of firm names – then what?

The next step is reviewing posted resumes to find practitioners that have a technology background that fits the nature of the invention. Of course, by definition, every patentable invention is something never seen before, so you cannot find a perfect fit. But you can find patent practitioners with experience in the same technology field as the invention. And experience includes not only exposure to a technology field, but the length of that exposure. If you are a small enterprise or solo inventor, you should be looking for practitioners with at least 10 years of experience as a licensed patent lawyer or patent agent (while many large patent firms use “technology specialists” to draft patent applications, those specialists aren’t licensed to practice before the U.S. Patent & Trademark Office).

The easy part is now done – you have a list of experienced patent practitioners with relevant technological backgrounds. The next step: personal contact. You may want to do a telephone interview initially, to cost-effectively winnow candidates for later personal interviews. What you should be trying to assess includes:

  • Whether the practitioner’s background actually fits your field of invention.
  • The “speed of uptake” of the practitioner – that is, how fast does the practitioner understand the nature of your invention.
  • The interest of the practitioner in taking you on as a client (many large firms no longer accept small enterprises or solo inventors as clients, generally to avoid conflicts with larger clients).
  • Whether the practitioner you are talking to would be preparing a patent application on your invention or would instead supervise another (generally more junior) practitioner.
  • A typical range of costs for preparation, filing (domestically and foreign), prosecution, and maintenance of a patent application in the field of your invention.

Follow-up in-person interviews are optional. However, while a telephone conversation may be sufficient to satisfy most of your questions, working with a patent practitioner involves trust and a significant commitment of time, money, and effort on your part. Accordingly, it would be prudent to invest the time to assess a short list of practitioners face-to-face to confirm the “fit” for you.

One other consideration that comes up in selecting a patent practitioner – should you go with a smaller, boutique firm that focuses almost exclusively on patent practice, or with a much larger firm that handles other areas of law that may be important to you, such as commercial, corporate, tax, and litigation matters? While there may be some advantages to a “one-stop shop” type of firm for some companies, note that one seeming advantage generally does not actually exist – that the intimate knowledge of your patent practitioner regarding your invention and the related art will be a valuable asset in helping to assert or defend your patent in litigation. In modern pa-tent litigation cases, a litigation opponent almost always insists on judicial establishment of an “ethical wall” in “one-stop shop” firms that prohibits all contact between that firm’s litigation team and your patent practitioner with respect to the litigation, so that knowledge of the opponent’s technology cannot be used to advance your patent or business position.

There you have it: generate a list of experienced patent practitioners with relevant technological backgrounds and then verify a good fit by personal contact.

John Land is a Partner in Jaquez Land Greenhaus LLP. He is a graduate of Caltech (BS with Honors 1975) and USC (JD 1978). He practices in the area of patents, copyright law, licensing, and the business problems of technologically-oriented clients.

2019-05-29T10:21:45+00:00