Selecting a Patent Attorney
Patent attorneys. What to consider in your search for a good patent lawyer and where to find one.





"If you don't know what to look for in a patent attorney, you could be playing Russian roulette with your idea."
Tomima Edmark, inventor and author


Patent attorney tips.  Be cautious about choosing a patent attorney with a high registration number.  “Another general sign of experience is a low registration number. Because the nuances of patent law are extremely difficult to learn without veteran supervision, a patent attorney with a registration number higher than 52,000 should be avoided unless he or she is affiliated with a more experienced attorney."  How and where to find intellectual property attorney assistance. (Spencer Warnick, partner at Hoffman Warnick & D'Alessandro,  “Know how and when to choose a patent attorney,” The Business Review - Albany, July 1, 2005)

Prepare a list of interview questions before hiring a prospective patent lawyer.  When choosing an attorney to prepare your patent application, prepare a list of questions before your interview.   You can find a list of questions to ask attorneys you are considering working with in Richard C. Levy’s book, The Complete Idiot’s Guide to Cashing in on Your Inventions.  Interview questions for patent attorneys. (Richard C. Levy, The Complete Idiot’s Guide to Cashing in on Your Inventions, The Penguin Group – USA- Inc., New York, 2002, 7th printing, pp. 164-165)

Ask about invention licensing experience.  “Does the attorney have experience in seeking potential licensees and negotiating license agreements?” (Arnold B. Silverman, Eckert Seamans Cherin & Mellott, LLC, “Questions to Ask in Selecting a Patent Attorney,” JOM, a publication of The Minerals, Metals & Materials Society, 51 (10) (1999), p. 48)

Beware of patent attorney sales pitches. “Beware of an IP [intellectual property attorney] sales pitch that goes something like this:  ‘My last application sailed on through the patent office. They accepted it just as I wrote it.’  If you're the owner of the patent, that should set off alarm bells.  A patent might move quickly through the approval process to the delight of the business client, but a few years down the road prove worthless in court.  The true test of a patent is when it comes to litigation.” (Jim Gale, chairman of state bar committee of the Intellectual Property Owners Association, quoted in Sean Meyers, “Hiring an IP lawyer is more complex than one thinks,” New Mexico Business Weekly, February 23, 2007)


Would you like some professional help from a nonprofit organization in your search for a patent attorney?  If so, Inventors Workshop, one of the nation's oldest inventor assistance and support organizations may be able to help you out.  IWI also has a special PatentSaver program for member inventors to help save money on the costs of patenting inventions.  You can contact Inventors Workshop by email, by phone (805-879-1729) or visit Patent-Help-for-Inventors.org.


Insist on prior patent litigation experience if you anticipate the need to enforce your patent.  “Patent litigation can be extremely complex because of the legal and technical issues. As a result, insist on prior patent litigation experience if that is what you need. Patent enforcement also requires experience in a federal court.” Patent law attorney. How to find a good lawyer to help patent an invention. (Spencer Warnick, partner at Hoffman Warnick & D'Alessandro,  “Know how and when to choose a patent attorney,” The Business Review - Albany, July 1, 2005)

Ask about fees.  “It is important to ask about fees; it is appropriate to determine what attorney's fees and disbursements are involved in proceeding with the work. Are there others in the law firm who are capable of doing portions of the job, with or without supervision, at a lesser rate, thereby saving the potential client money? It is also appropriate to inquire as to whether, in lieu of hourly rate charges for [patent attorney's fees], alternate billing arrangements, such as fixed-fee arrangements, are available.” (Arnold B. Silverman, Eckert Seamans Cherin & Mellott, LLC, “Questions to Ask in Selecting a Patent Attorney,” JOM, a publication of The Minerals, Metals & Materials Society, 51 (10) (1999), p. 48)


How much are patent attorney fees? How do your patent lawyer's fees compare to fees charged by other patent lawyers?  How much does a patent cost?  What kinds of costs can you expect if you elect to pursue patent litigation?  How much does it cost for invention patent protection?  How much does patent insurance cost?


Watch out for hidden fees.  One of the questions that you should ask before choosing a patent lawyer is, “Are there any hidden charges in addition to service fees and disbursements, including government fees, etc.?”  According to inventor/author Richard C. Levy, “Lawyers like clients to pick up their overhead plus fees.  Some lawyers charge for incoming faxes.” How much are patent lawyer fees? (Richard C. Levy, The Complete Idiot’s Guide to Cashing in on Your Inventions, The Penguin Group – USA- Inc., New York, 2002, 7th printing, pp. 164-165)  What can you expect to pay on average in patent attorney fees?

Don’t skimp on attorneys if you plan to ask for venture capital funding.  "If you're trying to obtain venture capital, you can't skimp on patent counsel.  The VCs are not going to invest unless they know your technology is protected, unless they can have proof of concept and get a monopoly."  (Thomas Loop, Loop Intellectual Property Law, PLLC, quoted in  Doug Cooley, “A bent to invent,” Puget Sound Business Journal, July 26, 2002)

Seek patent attorneys experienced with “real world” business.  “Acutely resourceful business acumen and passion are two key characteristics of a successful IP attorney.  Myopia is one of the classic downfalls of otherwise talented -- but basically 'book smart' -- attorneys. You need to live in the real world, get out of your ivory tower, roll up your sleeves and understand how business owners make these strategic decisions every day.”  How to select and find patent and trademark attorneys. (Gregory Weisman, California-based author and expert on intellectual property, quoted in Sean Meyers, “Hiring an IP lawyer is more complex than one thinks,” New Mexico Business Weekly, February 23, 2007)  Order Gregory N. Weisman’s article, Three Tips for Protecting Your Intellectual Property.


“It's easier to teach somebody the law than to teach them science.” 

Stephanie Seidman,
Intellectual Property Attorney
California Patent Attorney
Bell, Boyd & Lloyd


Get the best attorney you can right off the bat.  “[Randy Nelson, president and chief executive of Intrinsic Bioprobes Inc.] says most of the expenses he incurred in pursuit of this particular patent were because he didn't hire the right attorneys.”  He spent $50,000 and went through two attorneys before finding the right one. "Lesson No. 1: Always get the best attorney you can off the bat, and hopefully one who's in a firm so you're not dealing with a patent attorney, but you're dealing with a legal firm.  If you don't do that and try to kind of take the cheaper way around to it, you're going to start burning time."  (Randy Nelson quoted in Angela Gonzales, “Companies overcome hurdles to protect intellectual property,” The Business Journal of Phoenix, March 10, 2006)

Where to find a patent attorneys.  “For a listing of all PTO-approved patent attorneys and patent agents, go to the PTO Web site at www.uspto.gov and look under "General Information." You can search for attorneys and agents by geographic location as well as by name in the agent and attorney roster. Another option is to search for patent attorneys at http://lawyers.martindale.com/marhub [now www.martindale.com]. This Web site not only outlines lawyers' basic qualifications and contact information, but also provides their resumes.” (Tomima Edmark, inventor of the "The TopsyTail, Patent No. 5,036,870,” “Finders keepers: not sure how to choose the right patent attorney? Here's where to look for,” Entrepreneur, July 1, 1998)