A patent is a commercial asset that gives its owner the right to stop others (amongst other things) making, using, selling and/or importing certain products and/or processes.
The patent system presents businesses with the twin challenges of securing their own patent rights (so that others are not allowed to copy their products and/or processes) and navigating around others’ patent rights to avoid dispute.
Patent attorneys are professionals specialising in these challenges. Finding the right attorney for your business is an important step towards meeting these challenges.
The right attorney will have experience relevant to your products and/or processes, significant experience in patent law, a commercial outlook that suits your business and a personal style that works for you. Here are some questions to ask to help you find ‘the one’.
1. Are you registered?
This is an easy one. If the answer is ‘no’, walk away. By law, only a registered patent attorney may describe themselves as ‘a patent attorney or agent for obtaining patents’.
2. What technical qualifications do you have?
All patent attorneys have some form of technical qualification. Usually it is an engineering or science degree. Of course, that qualification should complement your technology – a biologist is the wrong person to talk to about your mechanical invention!
3. What technical experience do you have? Have you worked in my industry?
Does this person understand you and your technology, or will you continually have to go back to basics? Starting with someone who understands the lingo in your industry and has background knowledge relevant to your invention is a head start.
Likewise, shared industry experience improves the prospects of matching communication styles. For example, if you are in manufacturing, finding an attorney comfortable interpreting technical drawings and interrogating CAD data may be of value to you.
4. How long have you worked in patent law?
Experience is important. Some say it takes five years to train an attorney (after they have their technical degree). Others put the number closer to eight. Does the attorney give you confidence that they are familiar with the topics of interest to you?
5. Do you act for similar clients? Do you have any conflicts?
Finding an attorney with other clients similar to you is a two-edged sword. On the one hand, having similar clients improves the prospects of a good fit with your business. On the other hand, an attorney with a long list of clients similar to you raises the risk of a conflict of interest.
Be very wary of an attorney who is not straightforward about the other clients they act for. An Australian attorney’s client list is for the most part public information because the Patent Office’s online database lists the attorney firm responsible for each patent and patent application.
6. Who will do the work?
The person you are talking to may not be the worker who completes the substantive work.
Often senior attorneys will meet and greet potential new clients and then farm out the work to juniors. That’s not necessarily a bad thing – an enthusiastic junior looking to build a practice alongside your business might be just what you need. On the other hand, juniors are juniors. Find out just how junior is Junior and to what extent their work is supervised, and make sure these two marry up.
How much contact will you have with Junior? Should you meet Junior before engaging the attorney?
7. What do you charge?
A good patent attorney will give clear guidance on the expected costs of a given exercise and outline their charge-out rates and cost structures at the outset.
There are many options for pursuing patent protection. It typically takes years from an initial patent application to a granted patent. Be sure to discuss the long term costs, not just the costs to get started. Some attorneys have lower costs at step 1 and then have higher costs at step 2 and so on.
Attorney fees typically depend on unpredictable factors – for example, if you are pursuing patent protection, the costs will vary significantly depending on the Patent Examiner’s objections, although some attorneys advertise fixed price services.
Form your own views on the pricing model. Fixed price servicing may seem attractive, but be wary of the asterisks that typically go with such offers. Would you go to a dentist who offered a fixed price to care for your teeth for the next 10 years? What sort of service would you expect if you had problems? Likewise, if an attorney’s estimates are completely vague, does that reflect genuine uncertainty or does it suggest inexperience?
Scrutinise any low offers. What’s missing? Does the quote include official fees? GST? The lowest price is not necessarily the best value offering. An ineffective patent application is not good value at any price.
8. When will the work be completed?
Beyond the immediate work required, what are the usual turn-around times for routine work? Does it sound like a well-managed practice?
9. How many extensions of time for attorney error have you filed? – Tell me about your administrative staff and diary systems.
This is a good probing question. The patent application process is punctuated by numerous deadlines and intervening periods of inactivity, and a good patent attorney may have hundreds of patent applications in their care. Good administration is essential.
The Australian Patent Office allows for extensions of time where a deadline has been inadvertently missed. A low number of extensions of time for attorney error is a good indicator of a well-run practice.
Be prepared for a non-zero answer. Even in the best practice, errors can be made. On the other hand, if you get a sense of disorganisation and routine problems, walk away.
10. How can I minimise costs?
There is much you can do to minimise patent attorney costs. A good attorney will outline the form of information that they need from you to most efficiently complete their work. For example, providing a detailed description of your new invention will minimise the attorney time required to prepare a patent application.
And finally, the key point: It’s worth spending time to find the right attorney for you. Effective patent protection preserves profit margin by limiting competition, and potentially opens up new revenue streams via licensing. Good patent advice can steer you clear of legal disputes potentially crippling to your business. The right attorney is someone who can assist with that protection and provide that advice in a way that works for you.