This is the second part of a two part series responding to Inc.com’s Seven Signs You’ve Hired a Great Patent Attorney. In Part 1 I dealt with the first three signs in the original article, which are focused on context, and explained my thoughts on things a great patent attorney could do to help a patent serve as an effective part of a larger business strategy. This part deals with the remaining four signs identified in the original article, and explains how a solo inventor can evaluate if his or her patent attorney has skills required to be “great.”
Evaluating Skills Requires Skill
I feel it is effectively impossible for a solo inventor to evaluate whether his or her patent attorney is competent as a lawyer. Patent law is a highly specialized field, and even someone just out of law school is likely to be able to dazzle a solo inventor with concepts that he or she has never seen before. In my experience, this can lead clients who are trying to evaluate the competence of their patent attorneys to focus on minutia which is unlikely to have any substantive impact, and which the client is likely to misunderstand in any case. For example, in a past case I had a client who corrected me because I addressed a paper using a salutation that didn’t match the examiner’s gender (e.g., “Dear Sir” with a female examiner). As it happened, that paper wasn’t for the examiner, but directed to another patent office official for whom the salutation was correct. This was easy enough to explain once the client brought it to my attention, but I think it is a good illustration of how easy it is for a client who isn’t familiar with the patent system to go wrong when trying to judge an attorney’s work product.
While I don’t think a solo inventor should expect to be able to evaluate a patent attorney as a lawyer, that does not mean that that a solo inventor can’t make any kind of judgement as to quality. The trick is to focus on the aspects of the attorney’s job where the client does have relevant expertise – i.e., the technology. For a patent attorney to effectively represent an inventor, the attorney needs to be able to understand the invention and describe it both completely and in enough detail for a reader to understand how to make and use it. Additionally, if the same attorney is both preparing and prosecuting the application, then he or she will also need to be able to understand related technology (e.g., prior art cited by an examiner) and explain how the inventor’s technology differs from what’s already available. While a solo inventor may not be competent to write a patent application, he or she will be able to evaluate the technical sufficiency of the application once it is complete. Similarly, if a patent attorney who is prosecuting an application can’t come up with arguments that an inventor feels make sense, this is a sign that the patent attorney may not have the technical expertise necessary to provide the “great” representation an inventor may want.
Beware of False Certainties in an Uncertain Process
Rather than acknowledging or accounting for this asymmetry between an inventor’s ability to make legal versus technical evaluations, sign 4 from the Inc.com article is actually something I would consider a red flag that an individual inventor might miss if he or she isn’t familiar with the patent system. Sign 4 was “[t]hey provide you with the total cost of getting a patent to issue.” While this may be a reasonable expectation for some kinds of services, it does *not* make sense for patents. Getting a patent to issue requires dealing with many factors which are outside of the attorney’s control (e.g., the examiner), and any attorney who can say “if you pay X then the patent will issue” is failing to convey the uncertainties that are inherent in the system. It is reasonable to provide things like an expectation of fees for particular tasks (e.g., responding to this rejection will likely cost this amount), or overall estimates for normal sequences of events (e.g., in general, drafting and prosecuting a patent application for this type of invention usually costs between this low and this high estimate). However, I would expect any “great” attorney to make clear that actual costs may diverge from these types of expectations or estimates based on various factors (e.g., if an impasse is reached that requires an appeal to break), and any attorney who “provide[s] you with the total cost of getting a patent to issue” is not providing the whole story.
Basic Competency Doesn't Equal Greatness
Signs 5 and 6 aren’t red flags in the same manner as sign 4, but they still don’t provide a good yardstick for telling if the patent attorney you’ve hired is “great.” Those signs are, respectively, “[t]hey treat provisional patent applications differently than non-provisional patent applications” and “[t]hey conduct interviews for office actions.” In both cases, I think the signs are good general guidelines. Provisional and non-provisional patent applications are treated differently by the patent office, and so it (usually) makes sense for them to be treated differently by the patent attorney who drafts them. Similarly, interviews are generally much more effective channels of communication than written responses (I addressed this in my article, 5 Tips to Having a Good Patent Examiner Interview, and so it usually (but not always) makes sense to conduct them when responding to an office action. However, these guidelines are so broadly followed that I don’t think they can reasonably be used to separate the “great” patent attorneys from the rest. To do that, an inventor would need to be able to do things like determine if the attorney’s treatment of a provisional versus a non-provisional was correct, or evaluate if the attorney did a good job conducting the interview. As mentioned above, I don’t think most individual inventors will have the familiarity with the patent system necessary to make these kinds of judgments, and so I don’t think that signs 5 and 6 would be helpful in determining if a solo inventor’s patent attorney is “great.”
Summing Up: What Does (and Doesn't) Matter
The final sign from the article – “[t]hey don’t run ads” – is something I think is simply irrelevant to whether a patent attorney is “great.” Patent law is a business. Just like any other business, some people advertising are lousy, and some people advertising are great. This simply reflects the fact that preparing and prosecuting patents is different from promotion, and activity (or lack of activity) in one doesn’t say anything about competence (or lack of competence) in the other. To treat advertising as a red flag would be tantamount to saying that being a patent attorney is different from being any other type of service provider. While I love to think that patent attorneys like me are in a unique class by ourselves, that simply isn’t true, and so disqualifying a patent attorney because he or she runs (or doesn’t run) ads, makes no sense.
The bottom line to this (and part 1) is that figuring out if you have a “great” patent attorney is hard, especially if you’re a solo inventor with little or no experience in the patent system. It isn’t impossible – an attorney who can help put your patent in the proper business context, and who demonstrates technical skills to understand and describe your invention is more likely to be great than one who can’t. However, there are no shortcuts, and numbered lists, while they may make for great headlines, tend to oversimplify things and can give a false impression of your patent attorney’s competence (or lack of the same).
Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”