I was going to skip this post, but I spoke to a colleague recently that reminded me how important it is to choose the right patent attorney. This colleague started a business roughly five years ago to produce novel software for streaming media. At inception, the business took steps to protect its intellectual property, including pursuing patents and trademarks. For its patent applications, the business selected a fairly large, nationally recognized firm. As you can probably guess things did not work out so well. Now that the patent application is being prosecuted, the business is having a hard (expensive) time getting meaningful patent protection from the patent application filed by this firm.
Unfortunately, this is not an isolated case and small businesses are not the only ones that fall into this trap. Indeed, I have first hand experience fixing the applications prepared by some of the most prestigious law firms for clients that paid these firms millions of dollars every year.
So how does one avoid falling into this trap? Answer: the attorney or agent that is selected must be a good match for the business. Here are a few variables to consider:
1. The size of the business and that of the firm - Larger firms generally have more resources to service larger clients. Unfortunately, these firms typically provide preferential service to their larger clients. As a result, work for small clients is typically handled by junior associates with little or no supervision. Smaller firms do more work for individuals and small businesses, which translates into more attention for these clients.
2. The experience and background of the attorney or agent that will actually prepare the patent application - Generally, the more experience that a practitioner has the higher probability of getting good quality patent. Also, I prefer that the practitioner have litigation and licensing experience. I find that practitioners with this additional experience do a better job avoiding problems that only show up when applicants are trying to monetize their patent. The practitioner's background should also match the technology that applicants are pursuing. For example, biologists are likely better suited for patent applications directed to biotechnology whereas engineers are likely better suited for electro-mechanical devices.
3. Cost - The practitioner's rates must fit within the applicant's budget. Larger firms typically charge more to cover their substantial overhead. Smaller firms have better control over their overhead, which typically allows them to charge less. For example, as a fifth year associate at a medium to large firm in New York City my billable rate was near $400 per hour. When I transferred to a smaller firm in the same city, my billable rate went down to $250 per hour. I have seen practitioners charge as low as $100 per hour and as high as $500 per hour. There are also firms that offer services at a flat rate. Note, the hourly rate varies based on the practitioner's level of experience as well as other factors. Therefore, a higher hourly rate does not necessarily translate into a higher overall cost as senior practitioners typically require less time to complete a task as compared to their junior counterparts.
4. Recommendations as well as criticism from similarly situated peers should be taken into consideration.
As I hinted above, I have had a lot of experience fixing patent applications that were mishandled by others. In most of these instances, the owners of these applications could have avoided costly mistakes by simply doing their homework and asking tough questions before selecting a firm for their patent applications.
On a side note, there are a number of invention marketing/submission/promotion companies that offer inventors patent and marketing services for their invention. I haven't dealt with any personally, but I've heard that a number of them are unscrupulous to say the least. This is the way that the scam plays out. An inventor contacts the company for a consultation. The company tells the inventor that it is a great idea (regardless of the merits of the idea) and that they would like to market the invention for them. The inventor only has to pay the full cost of the patent application and the full cost for the company to submit the invention to each company. It is my understanding that few if any inventions are actually licensed to third parties. More information about these companies can be found here and here.
