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.
Join the Discussion
7 comments so far.
ReaderApril 8, 2010 08:00 pm
The article looks to me like it is patterned after generic articles on how to pick attorneys. I’m a bit surprised that Clark, the entrepreneurship professor, gives the advice that he does. I would hope someone in that field would know more.
Several other questionable statements in the article:
“Look for clues to their reputation; quotes to the press, which will indicate how a lawyer may represent you; and a sense of workload.”
I don’t know of attorneys talking much to the press during patent prosecution. That advice seems better for high-profile civil litigation or criminal defense.
” If a lawyer is tied up with a alrge or ongoing case, you may want to pass on him or her.”
Aren’t most good attorneys fairly busy?
“If you want to dig even deeper, call your state Bar Association and ask whether the lawyers you are considering remain in good standing, and confirm the background you’ve found them to have.” Checking the bar’s website would be quicker and icer to bar officials. Moreover, the article doesn’t caution readers that complaints against attorneys only become public in most states if the bar association finds the complaint valid and decides to issue a public reprimand. Many cases are difficult to substantiate, and most complaints against attorneys are frivolous. So bar complaint histories really aren’t that helpful.
Keep up the good work in highlighting some of the poor advice mistakenly given by journalists in a rush.
GilgameshsoulMarch 5, 2010 01:17 pm
The article says “business and social circles” then explains it by saying “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”. Like you explained, Gene, that’s not using business circles to get contacts. I agree that gettting a brother in law to do your patent work might not be a good idea, but that doesn’t mean other business networking avenues are bad.
Steve MMarch 2, 2010 02:42 pm
Good and important points, Gene.
It’s unfortunate that so many (most? all?) “business” periodicals regularly disseminate incorrect, even legally-dangerous, advice when it comes to IP.
If and until they’re willing to take steps like hiring attorney-writer/researchers; or at least hiring attorneys to review and fact-check pieces written by their regular writers; they would do their millions of readers a great service by NOT proffering legal advice.
step backMarch 1, 2010 09:45 pm
Thanks for tackling this oft repeated travesty.
It was probably written by a well meaning spot writer who knows nothing about patent law but figures that some “common sense” can be applied and made to appear as though it were sage advice for the uninitiated.
As a general practice, I do give newbies calling in on the phone a couple of minutes of my time just to set them on the right path; for example, telling them what key words or phrases to google so they can educate themselves. I see nothing wrong with a prospective client interviewing a couple of attorneys on the phone just to get a feel of whom they will get along with. Of course, if the general counsel of some big tech corp. is calling you to see if you can pick up some of his overload work, you’re not going to say heck no, I don’t do telephone interviews. You’re going to say how high do you want me to jump sir? (Especially in this economy.)
Gene QuinnMarch 1, 2010 01:41 pm
AC & EG-
I agree that the TV attorneys and free initial consultation folks make everyone think that is the norm. It isn’t that I don’t want to give folks some free information, but in this space what can you really tell someone without a patent search at least, or knowing a good deal about their invention? In the PI context the free consultation frequently leads to a new client. In the patent context a free consultation normally leads to inventors calling another dozen attorneys asking everyone different questions to collect as much information as they can. Totally different busineses.
I also get a lot of work from happy clients. Why would you not want to ask around to find someone who has treated others well and is competent?
The other thing I meant to mention was the geographical restriction. I get people sometimes who don’t want to work with me because I am not near them, but I have clients all over the US and all over the world, most of whom I have never met in person. That is the norm in the patent world, so advising that you work with only someone local who you can meet with face to face extremely limits the field and is not what sophisticated inventors do. Yes, it can be helpful to meet, but technical expertise and a work style and personality that match with the inventor means so much more (at least in my opinion).
EGMarch 1, 2010 12:13 pm
Are these folks for real? Your comments on right on about asking others which patent attorneys to go to. (Most of my referrals come from other attorneys who know me or current clients to tell prospects I know what I’m doing and am fair in what I offer for the price).
AC: PI lawyers have the free initial consulation because there are many, many of them (vs. very, very few of us patent attorneys). I normally give a prospective some initial general IP advice without charge, but if we’re going to get serious, I need to get paid for it (usually an advance of fees up front). Gene is correct: partnering is just another way of saying “I can’t pay you, but I’m entitled to your services for free.” The US is becoming too much like Europe: the “land of entitlements.”
American CowboyMarch 1, 2010 10:19 am
About the free interview with a doctor thing, the lawyers who do advertise — the personal injury guys — often talk about no fee initial consultations or no fee till recovery. They screw up folks’s minds into thinking that is the norm for the legal profession.