Things to Consider When Hiring a Patent Attorney or Agent

There are many questions to ask when considering which patent attorney or patent agent to hire to help protect your intellectual property. Here are just a few things to consider.

First, it is usually a good idea to consider a patent attorney’s technical specialty. Some patent attorneys may be very specialized in one technical or scientific area, such as molecular biology or engineering, while other patent attorneys may have a broad understanding of many different areas. Depending on the complexity and technical level of your invention, it may be important to choose a patent attorney with a high level of technical understanding in a certain scientific field.

Also, it is important to find a trustworthy and competent patent attorney who will ensure your patent is well written with claims that would hold up in court if ever challenged. Some questions to ask on this subject may include:

  • Does the attorney do a prior art search on his or her own, or does he/she delegate the job to a professional searcher or professional searching firm? (Some inventors prefer the job be delegated out to a firm who’s only job is to search technical prior art, while others may prefer the attorney be responsible for the search.)
  • Will the attorney provide a written patentability opinion or a spoken opinion? The opinion should compare the claims that were found in any pertinent prior art patents discovered in the search with the claims he/she would draft for your invention.
  • What is the attorney’s legal education and patent experience in terms of years and the nature of the experience? How many patents has the attorney written and out of those, how many have made it through the whole application process and have been issued by the United States Patent and Trademark Office?
  • To what extent will the inventor be able to assist and participate with the attorney?

Finally, overall you should feel very comfortable with the attorney and be sure to ask about his/her price. Attorneys in large national or international law firms are usually more expensive than those in smaller independent offices. Some attorneys may charge by the hour, some may charge by each piece of work (for example each application or opinion they draft, file, etc), or both. You may also want to ask for a written engagement letter specifying the scope of work, fees, and any other terms if the attorney does not suggest one.

You can find a whole list of patent attorneys and agents, listed by state, on the United States Patent and Trademark Office website at: www.uspto.gov.

It is possible to work with attorneys who are located far away from you with the use of email, fax, and conference calls.

Please contact the Wyoming Technology Transfer and Research Products Center at the University of Wyoming for more information: (307) 766-2520 or at WyomingInvents@uwyo.edu.