Hiring the Right Patent Attorney
With so many patent attorneys – how do you if you are hiring the right patent attorney? There are a lot of things to consider, including costs. But what else?
At Trenner Law Firm, we understand that keeping costs under control is important to every small business. Our pricing is very competitive, and we strive to provide high-quality work product as cost-effective rates. While we are not the most expensive law firm, we recognize that we are not the cheapest law firm or patent agent you can hire. But as with most major purchases, there is more to consider than cost alone. Here’s what you need to know to hire the right patent attorney.
Does your patent attorney have an engineering degree directly related to your inventions?
- Mark Trenner has both a BS and MS in environmental and civil engineering, and another BS in electrical engineering with an emphasis on signal processing. His coursework has included computer programming.
- Mark was senior patent counsel for the National Renewable Energy Laboratory for 4 years, and his law firm clients have included two Fortune 100 computer and software companies. He enjoys helping small businesses in many different technology areas.
How experienced is your patent attorney in working with the US Patent Office?
- Mark Trenner has been registered with the US Patent Office since 1998 (as an agent) and since 1999 (as an attorney). He has written and prosecuted over 1,000 patent applications in the nearly 20 years he has been practicing. He established Trenner Law Firm over 10 years ago, in 2004, after working for several Denver-area patent law firms.
- Mark often finds it helpful to interview the Patent Office Examiner and work collaboratively with the Examiner, rather than just filing paperwork at the Patent Office. But he also has taken numerous matters up on Appeal when necessary.*
*Past performance is not a guarantee that your case will be successful. The outcome of every matter is based on its own merits.
Does your patent attorney help small businesses strategize their patent portfolio?
- It is important to look at the goals and objectives of the business, both now and in the future. Building a solid patent portfolio is more than just filing any patent application with the PTO. A successful approach requires consideration of current budget constraints, competitors in the marketplace, as well as future licensing opportunities and perhaps even sale of the business or business assets.
- Mark talks in depth with his business clients at least once every year (more often if necessary) to evaluate their current portfolio and make recommendations going forward. He wants to understand the goals for the business, as well as the competition. These strategy sessions are in addition to invention disclosure meetings in preparation for preparing/filing a patent application. And these strategy sessions are provided at no additional cost to the client.
Does your patent attorney work with you personally through the whole project, or will a less experienced attorney or patent agent be doing most of the work?
- Mark always works on every case personally.
- As a client, you will have Mark’s email and mobile phone number so that you can reach him directly whenever a question comes up.
Does your patent attorney quote flat fees for preparing/filing patent applications and downstream prosecution (e.g., response to office actions, requests for continued examination, and appeals)?
- All projects are quoted on a flat fee basis, including prosecution costs (quoted at time of project).
- Discounts are available on a per-case basis.
- Mark believes it is more important to work with a client until they are 100% satisfied with the project, than to be limited by the client’s desire to keep hourly billing costs down.
Does your patent attorney offer any other value?**
- Have a question about your matter or need some advice? Email, or call and talk to Mark – at no additional cost to you.
- Want a better understanding of how to interpret issued patents for possible infringement or as prior art? Schedule a strategy session with Mark – at no additional cost to you.
- Do your employees need training on inventions and patent applications? Schedule a strategy session with Mark – at no additional cost to you.
- Need to review your patent portfolio? Schedule a strategy session with Mark – at no additional cost to you.
- Need to meet in person? Meet at your office or at a conference room at any of several locations throughout the Denver metro area – at no additional cost to you.
**While Mark makes his best efforts to accommodate the needs of all his clients, Trenner Law Firm represents many clients and does not work exclusively for any one particular client. Therefore, limits on “free” phone calls and meetings may apply.