The Importance of Patent Attorney Due Diligence

When seeking a patent professional with whom you can partner, we cannot stress enough how important the upfront due diligence process is. You owe it to yourself to take the necessary time to determine which professional will be the right fit for your company’s circumstance.

We offer the following as starting points:

Does the attorney have experience in your technical area?

Does he or she really “get” your innovation or are they merely “parroting” back what you told them? This is critical if/when the attorney must later negotiate your application with Patent Examiners. Furthermore, should your application be for a software innovation, you should choose an attorney with a computer science or electrical engineering background. Software specifications require a level of specificity in the description of function far different from that of the specification of mechanical or manufactured devices.

Does the attorney first recommend conducting a patent search to determine the patentability of your business idea?

If so, what level of detail do they provide you in a report? Ask for an example. A search report without supporting references found is misleading at best and useless in a worst case scenario. It is well worth the initial minimal investment to conduct a search before possibly wasting precious startup funds on a patent application you may never get through the USPTO.

What is the attorney’s philosophy on the scope of claims?

This is important to you because it can have possible financial implications to you in later USPTO Office Actions. Claims that begin with very broad scope require more iterations in prosecution to arrive at the proper claim scope, while claims that begin with very narrow scope may take fewer iterations to complete, but may leave some value “on the table.” Each iteration has a cost associated with it and requires additional time. The attorney should be sensitive to your strategic business goals and work to arrive at the appropriate claim scope in a reasonable (2 – 3) number of iterations.

How many patent applications has the attorney filed? How many applications have been allowed (success rate)?

Ask for recent samples of published documents the attorney has authored and/or filed.

Finally, if an attorney pressures you to make a quick decision on preparing a patent application (provisional or non-provisional) or stresses the need to file for international patent protection (PCT= Patent Cooperation Treaty) before determining whether your product or service has an overseas market, you should pause and reevaluate. A partner should advocate what is in your best interests, not theirs.

Having been approached numerous times over the years to help clients “fix” patent application problems, I leave you with this simple piece of advice: To avoid anguish later, conduct upfront due diligence on attorney referrals within your community and ask probing questions before hiring your attorney!

*Photo by Gerd Altmann.