Last week Inc.com published an article titled How to Find a Good Patent Lawyer. Unfortunately, if you follow this advice you are likely to do exactly the opposite. If you can believe it, Inc.com suggests that you not ask business associates or others for reliable recommendations, which goes completely against the well established best practices in the industry. The article also suggests that if you have an Internet business you might want to find a patent attorney who also specializes in First Amendment law, almost as if those types of lawyers readily exist, which they don’t. The article also suggests that you interview your patent attorney like you would interview your doctor. This is something I hear all the time. Can someone please tell me exactly who conducts interviews of doctors prior to scheduling an appointment and paying fees? I have never met a doctor that would subject themselves to interviews prior to scheduling an appointment, have you? If you are honest I know the answer, and so do you, but those who claim to know better routinely suggest this as a responsible step.
The first substantive tip of the article says:
If your business is based only on creating, marketing, and selling innovative products, you might look for someone who specializes in and whose practice is solely focused on patents and copyright. By contrast, if your company also embarks on online pursuits or publishing, a lawyer who deals also in First Amendment and information technology law could be a useful partner.
Those familiar with patent practice know that overwhelmingly patent attorneys specialize in patent law. Some will dabble in copyrights, others will do trademark law, but patent law is a specialty almost like none other, with perhaps only tax law even approaching in terms of disciplinary focus. While it might make sense to look for a law firm that has a variety of attorneys that can assist your company as it grows, looking for a patent attorney that also specializes in First Amendment law is likely to be quite similar to the search for the Holy Grail — Monty Python style. First Amendment practice and patent law are extraordinarily different, and assuming that a good First Amendment lawyer is a patent attorney, or a patent lawyer can handle First Amendment issues is, well, naive.
On top of this, I cringe at the use of the word “partner.” New inventors and entrepreneurs frequently will look to “partner” with a patent attorney. What this is code for is “I don’t have any money but have a tremendously great idea/invention, so I will contribute the idea/invention and you contribute the legal work for free.” Sometimes these folks also want the patent attorney to pick up the costs associated with filing fees and other expenses. This is a pipe dream, and simply won’t happen. While there are some patent attorneys who will consider creative billing situations, and flat fee billing has largely taken over, or on the way to taking over, the industry, working for free has not and will never be an option. When inventors have nothing financial invested they tend to walk away at the first sign of trouble because they have nothing at risk. There are many obstacles between idea/invention and commercial success, and this never winds up being a good deal for the patent attorney or patent agent.
Perhaps most shockingly, the article goes on to say:
Once you know what you’re looking for, you can — and should — skip the typical step of asking around in social and business circles for someone reliable. “The absolute worst thing you can do it talk to your friends and hear so-and-so’s brother is an attorney, you know he does wills and stuff,” Clarkin says. Instead, search the reliable site Lawyers.com using specific parameters you’ve laid out as well as your geographic area.
Let me be as clear as I can be… you should NOT skip the step of asking around. If you are new to inventing you should absolutely find a local inventors group close to you, join and go to some meetings. You should also consider joining the United Inventors Association, a national non-profit organization. As every inventor group will tell you, some of the best things an inventor group can provide are the collective information of its members. While you might have an invention different from others and require a patent lawyer with a different set of experiences, there will undoubtedly be some who can steer you toward people who are reputable and most importantly away from those who are not reputable.
It is also critical to remember that patent lawyers typically specialize in particular areas of technology. While most can do simple mechanical inventions, most also find an area of expertise. For example, I am an electrical engineer and I work on mechanical, electrical and computer related technologies, including software and business methods. So if you find an inventor who invents in or near the same technological space they will likely be able to give you the names of some patent attorneys who handle this type of work. Also remember that because many attorneys do not advertise, or advertise much, the way they frequently get clients is through positive referrals and word-of-mouth. In the legal industry happy clients are the best advertising, so if you refuse to ask around you will likely cut the universe of potential, qualified patent lawyers down substantially.
Having said this, you definitely want someone who specializes in patent law, and you certainly want to stay away from those who do wills, unless of course you need a will. Someone who does wills should not be able to help you anyway, because in order to represent clients at the United States Patent and Trademark Office you must be a patent attorney or patent agent, which means you need to pass a specialized patent bar examination given by the USPTO. To take the exam you need to have either a science undergraduate degree or enough science credits to demonstrate a familiarity with technology. Having said this, if you have an attorney you trust why not ask him or her for advice? I would be surprised if they couldn’t steer you in the right direction and give you some basic advice on what to watch out for and who to talk to.
Finally, the last thing that made me scratch my head was:
The other things to check are whether the lawyer, his or her family, or clients, have any conflicts of interests. Does she or he represent any interests opposing to or intersecting with your business?
I can understand what is being said here, but you need to be careful. Patent lawyers develop a specialty and people and businesses go to them because of this specialty. For example, I handle a number of software clients, typically with an Internet or e-Commerce application. People read my writings on these topics and to at least some extent they come away believing I am knowledgeable. If I could only have one software client how would I be able to develop the specialized knowledge in this area to adequately represent clients? Conflicts of interest are a legal matter, and in truth before it gets close to a legal matter most attorneys will shy away if there is anything too close for comfort. But if you move away from a patent lawyer because he or she already has clients in the same technological area you will doom yourself to working with someone who is figuring the technology out for the first time, not exactly ideal for you. So definitely be prudent, but realize you want the expertise that comes with experience, while at the same time knowing that your best interests will always be considered.