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Miami Patent Attorneys

How to select and choose your counsel

Prior to filing a patent application, and before becoming “patent pending” one of the first steps in the long adventure to an issued U.S. Patent is to search for, interview and select a patent attorney.   Here are five considerations that may be helpful in selecting the right registered patent attorney not only for the inventor, but also for the nature of the technology:

First Consideration:

One of the first things to realize is that while an attorney who specializes in intellectual property law may provide counsel as to a variety of trademark and copyright matters, only a registered patent attorney (or agent) can represent an inventor regarding a patent application before the United States Patent & Trademark Office. Therefore, when researching potential attorneys to provide counsel throughout the patent application process, it is important to realize that only a registered patent attorney can file a patent application on behalf of an inventor.

Second Consideration:

Miami Patent AttorneysA second consideration is the technical backgrounds of the patent attorneys that an inventor seeks to interview. For most consumer products and mechanical inventions, most registered patent attorneys maintain a sufficient background and technical understanding to draft and prepare a patent application that appropriately covers the invention. However, for other more specialized inventions, it may be important to review what registered patent attorneys have similar technical backgrounds that relates to the subject matter. For instance, for biotechnology and life sciences related technologies it may be important to have a registered patent attorney with a chemical, chemical engineering, biochemistry or related background. Similarly, for an electrical invention it may be important to have a patent lawyer with an electrical engineering degree or computer science background write such an application. Careful review of not only the attorneys’ technical degree, but prior industry experience may be prudent and helpful.

Third Consideration:

A third consideration during selection of a registered patent attorney is their training and resources. How many patent applications as the registered patent attorney drafted?    What percentage of that patent attorney’s practice is focused on intellectual property issues? Both of these are important considerations to consider as you want to make sure that the attorney not only has experience, but specifically patent drafting experience.

As a related consideration, it is important to determine the resources available for that attorney. Important questions to raise is whether the registered patent attorney has a patent paralegal to help with docketing, reporting and managing of the inventor’s patent filings. Moreover, does the registered patent attorney have other patent attorneys who can help review a draft patent application and determine any gaps or issues (ie, a second set of eyes), as well as to fill in for the patent attorney in case of emergency. All of these are important considerations to review. To share a basketball analogy, having a deep bench often wins championships.

Fourth Consideration:

Apart from technical education and resources, an important additional consideration to gauge selection of a patent attorney is how an attorney seeks to keep abreast of new laws and developments – including issues relevant to the local economy. Potential avenues to look into are participation and leadership in the Florida Bar, as well as the local volunteer bar associations (like the Dade County Bar Association). Moreover, look into the speaking engagements and other related professional activities where a prospective registered patent attorney has participated.

Fifth Consideration:

A last but important consideration in selecting a registered patent attorney is involvement in the local community. Does the lawyer give back to the community?   If so, how?    Does the attorney help with local efforts to foster inventorship?    Do they help teach or volunteer at local colleges and institutions?   While such activities may not necessarily correlate to a great patent attorney, they do state a lot about the patent firm that you may ultimately select.