Going into a consultation for your patent law needs, you probably have a few expectations of what you will hear.
However, you will need to dive beneath the surface if you want to find a trustworthy partner for the long haul. Here are a few questions you must ask to ensure the firm you choose is perfect for your needs.
1. Are you licensed to practice before the USPTO?
The attorney you choose must be registered to practice law before the U.S. Patent and Trademark Office (USPTO). Check the USPTO website to ensure you are dealing with a registered patent attorney. You should also ask how many years of experience your attorney has.
2. Are you in good standing?
Check the Office of Enrollment and Discipline (OED) at the USPTO to ensure that your attorney is in good standing.
3. Do you specialize in patent prosecution or litigation?
Those specializing in patent prosecution can help you file and protect your intellectual property. Meanwhile, firms specializing in patent litigation can allow you to sue anyone infringing on your patent or defend you if you have been accused of infringement.
4. How many patent applications do you file a year?
Ask for the number of patent applications the firm typically files in a year, and do your own search on the USPTO website or in Google patents to find patents obtained by the firm. The number of applications filed and patents obtained is one measure of patent law experience.
5. Who are your typical clients?
Firms can represent many clients, including:
- Major corporations
- Startup businesses
You need to identify which categories you fall into and see that this firm has represented similar clients before the USPTO.
6. What would you do if you were me?
This is probably the best question you can ask of a patent attorney. You know your invention. Your attorney knows the law. There are many options and paths to protecting your invention, including searches and opinions, provisional and non-provisional patent applications, decisions about design applications versus utility patents, and foreign patent applications. Be sure to ask your attorney what he or she would do if they were you!
Do not be afraid to go beyond this list to get all the information you need before committing to this relationship. After all, your money and intellectual property are what is at stake.