Rules for Working With a Patent Attorney
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
Blog | Twitter | Facebook | LinkedIn
Posted: Oct 3, 2009 @ 12:32 pm
This article was written for the United Inventors Association Newsletter and is reprinted here with permission. Sign up to receive the free UIA weekly newsletter.
Over the years I have received quite a number of e-mail inquiries and telephone calls from inventors who are looking for information and advice, perhaps even representation. Typically, the initial communication starts off with the inventor saying that they have an invention that they know will be well received in the market and that they are looking for a patent attorney who can represent them. They request that a patent attorney call them as soon as possible to move forward. This is a red flag for a patent attorney and understanding why will help you become a more sophisticated consumer of legal services.
First, it is critical to understand that every inventor thinks that their invention is going to be well received in the market, but in my experience inventors who state this in the initial e-mail or early during an initial telephone call are heading in a direction of wanting to partner with the patent attorney. I have the invention, which is brilliant, and you can do the legal work for free and pay all the fees due to the United States Patent and Trademark Office. Inventors think this is a great deal for the patent attorney, but the truth is that no patent attorney I know who has ever attempted such an engagement has ever made a dime. It is not a good deal for the patent attorney, and why would a patent attorney want to work for free and advance costs when you don’t believe enough in your invention to do the same? This is starting off on the wrong foot and if it is not your intention to be seeking free legal work, which in the patent arena is as common as a unicorn or Bigfoot, then you need to understand the perspective of the patent attorney.
Here are some basic rules and truths:
1. Every patent attorney gets these kinds of e-mails and telephone calls every day, sometimes multiple times in the same day. If I were to call everyone back who wanted to talk to me I would have no time to do any work and would go bankrupt.. I am not unique though. All patent attorneys are barraged with these types of questions on a daily basis. It is unrealistic to expect a patent attorney to pick up the phone and call you immediately, perhaps ever. If you want to do business with a professional you need to be and act professional. Set up an appointment, speak with an assistant and go through proper channels. Those who expect deviation from proper business protocol are avoided by serious professionals and typically are unwilling to pay for services and want to play “Let’s Make a Deal” instead.
2. Those who ask for a telephone call or a free telephone consultation before deciding whether they want you to represent them almost never turn into clients. If this were not the case, patent attorneys would be far more willing to take these calls. Over the last 10 years running IPWatchdog.com, I can count on one hand, perhaps one finger, the number of folks who presented with what I will call interview questions who turned into paying clients.
3. While it might seem like an easy, quick question to you, the truth is that it is not an easy or quick question. There are simply no easy, quick questions that can be asked in the patent and invention space. In fact, there is virtually nothing a patent attorney can discuss without knowing a good deal about your invention and having conducted a patent search and associated patentability analysis. I get folks saying “I just want to know if it is patentable.” Of course you do, but that cannot be answered without research and time spent, which costs money. Whether the attorney says yes or no they open themselves up to liability either way, so research and proper consideration is required.
4. Patent attorneys are very busy and have a lot of work from clients who pay them in advance for doing work and answering questions. It is unrealistic to expect that a patent attorney would willingly put work aside that pays in order to talk to someone for free or do free legal work. Patent attorneys sell time, so time is money. Patent attorneys are not leveraged on the work of others, and don’t have a product that can be sold on eBay while they sleep. So expecting free time is a big turn off.
5. Patent attorneys work in different ways, using a variety of processes. You cannot reasonably expect a patent attorney to change to meet your demands. I get people telling me that they do not want to communicate via e-mail, they do not use fax machines and they prefer telephone and written correspondence. My response is to say “that is fine, but I do not want to work with you and won’t work with you.” By layering on demands you can make working with you take more time, cost more and lead to inefficiencies and needless duplication of work. That costs extra, complicates matters and leads to errors. Selecting a patent attorney is very personal and working with someone who is on the same page with you is very important. Pick someone who you match well with, but do realize some demands will close doors with some, which may not be in your best interest.
This may seem harsh, but it is critically important for inventors to understand the industry and how it works if they want to have any chance at obtaining competent legal assistance. Inventors can be difficult to work with, and I say that in a loving way knowing that I am an inventor, and I am often difficult myself. The same thing that makes us successful can at times be a real detriment. An invention is so important to us and sometimes we are unreasonable, over protective, defensive and fearful. This almost sounds like a parent, and that is indeed the mentality. I understand the over protective parent mentality, as does everyone in the industry. Having said this, we all have horror stories about inventors who became the client equivalent of a Bride-zilla. So if you show Inventor-zilla tendencies early many reputable professionals who don’t want the drama may shy away.
It is absolutely critical to understand, particularly now during a recession, that patent attorneys have a ton of work and typically do not need more clients. A recession is boom times for virtually all patent attorneys. Everyone is trying to succeed on their own, which is a uniquely American way to view life. So most patent attorneys are not desperate for work so they don’t need and don’t want to deal with an inventor who approximates a NFL diva Wide Receiver. The last thing most of us want is the inventor equivalent of Terrell Owens. He talks to much, destroys team chemistry and he drops WAY to many balls thrown his direction. Yes, he is a great talent, but that only goes so far. If you view a patent attorney as a team player who is there to help and doesn’t want to be taken advantage of you are likely to start off things on the right foot and have a good working relationship, which will hopefully be profitable and rewarding for everyone involved.
About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
Zies, Widerman & Malek
B.S. in Electrical Engineering, Rutgers University
J.D., Franklin Pierce Law Center
L.L.M. in Intellectual Property, Franklin Pierce Law Center
Send me an e-mail
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Known by many as “The IPWatchdog,” Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.