What is a good measure of a patent attorney?
Before you hire a patent attorney, you should ask what their background is. Not only their educational background, but the types of patent applications that they have written. If your invention is for a toy, has the patent attorney written patent applications for toys before? If your invention is for a mobile “app”, has the patent attorney written patent applications for software? If your invention is for an environmentally friendly product, has the patent attorney written these types of patent applications before? In other words, does the patent attorney understand your invention and how it fits into the world around it? Will the patent attorney be able to write a patent application for your invention that is broad enough to include “spin-offs” and that is sufficiently detailed to enable every feature of your invention?
You should also ask if the patent attorney will advise you up-front whether they see any issues with your invention being allowed to issue as a patent. While most patent attorneys cannot give a definitive answer, a good patent attorney should advise you if they foresee any difficulty in prosecuting your patent in view of the prior art (i.e., what is already out there).
On that same token, you should also ask if the patent attorney will advise you after receiving an Office Action rejecting the claims in your patent application, whether they believe you have a fairly decent chance of successfully arguing the rejections, or if you will just be wasting your money.
You should also ask whether the patent attorney calls the Patent Office Examiner after they receive an Office Action rejecting the claims, or if they just file written responses. Patent attorneys who view patent prosecution as more of a collaboration with the Examiner (rather than as a confrontation with the Examiner) are generally more successful in finding a resolution to the Examiner’s rejections. This doesn’t mean that a phone call is always necessary. But in some cases it does help.
These are just a few questions you might want to ask before hiring a patent attorney. But the answers to these types of questions will generally give you a much better idea of the patent attorney’s experience.
