Are you licensed to practice law in my state? Yes____ No____
Many “patent attorneys” (especially in Florida) are not even licensed to practice law in the state in which they reside. Unlicensed attorneys cannot advise you on all of the legal matters that relate to patents and are not bound by the rules of The Florida Bar. Therefore, beware the patent attorney who does not have an office and works out of a briefcase or the trunk of a car. You can also buy electronics out of a car trunk, but you end up getting what you pay for.
Do you have liability insurance? Yes____ No____
Attorneys are not required to carry liability insurance. Liability insurance is there to protect you as the client in the case of malpractice. Much like general contractors, reputable attorneys carry liability insurance. Like contractors, attorneys with liability insurance are typically more reliable. If you would not have an uninsured contractor work on your home, then do not have an uninsured attorney represent you.
Do you perform all of your work in house? Yes_____ No____
Many patent attorneys farm out work to third parties located in other states and in some instances in foreign countries, such as India. This is often done with patent searches. These searches are often inadequate as they are limited to U.S. databases and performed by third parties who you have had no communication with you and thus, may not fully understand your invention. This is one reason many patent attorneys do not put their opinions in writing. If a patent attorney is not willing to stand behind their opinions by putting them in writing, then their opinions are worthless.
Are you board certified in Intellectual Property Law? Yes_____ No____
You should look for a patent attorney who has a broad knowledge of all areas of intellectual property and is able to advise you not only on protecting your ideas but also on all of the other matters that are often intertwined with intellectual property, such as business law. Patent attorneys who are only concerned with obtaining a patent for you are not going to take a broad view and long term approach to all of your intellectual property matters.
Can you assist me in enforcing my patent and other IP rights? Yes___ No____
Obtaining a patent is only the first step in taking your invention to market. Enforcement of your patent and other IP rights is important to maintaining a competitive advantage. In addition, patent attorneys who also litigate patent infringement cases take a very different view toward the drafting of a patent application and tend to draft patents that are more enforceable and more difficult to design around. Unfortunately, patent attorneys who are only concerned with obtaining a patent for you are only concerned with just that. This is regardless of how narrow the patent ends up being.
Keep in mind, these are only a few factors you should take into account when selecting a patent attorney. A good patent attorney should not only be able to help you through the patent process, but should also be able to help you through all of the stages of taking your invention from concept to reality so that you can profit from your invention. This includes advising you in all areas of intellectual property law as well as related matters, such as business law, licensing, manufacturing and investor issues.
A good patent attorney can make the difference between the success and failure of your invention. Therefore, make sure the patent attorney you choose to represent you is experienced, well established and a professional who can be there for you the entire way.