Excellent advice. And you just happened to use my hometown (Madison, WI) as an example.
Stephan Kinsella
August 27, 2007 | 9:18 am
The main problem with his suggestion is that quite often an attorney’s name will not appear on the patent–his firm, or the applicant’s attorney, may appear instead.
Stephan is completely right, searching by attorney name won’t necessarily retrieve a list of all patents the attorney has written.
The “attorney or agent” field is determined by what gets typed (by the patent firm or applicant) on the allowance documents. Some patent firms will put the attorney’s name, some will ONLY put the firm’s name, etc.
Also, the USPTO points out that:
Attorney or Agent (LREP)
This field contains the name of the legal representative of the patent applicant.
TIP: The Attorney or Agent field is searched differently than other name fields. To search for a full name, you should format your query as a phrase, enclosed in quotation marks and without dashes: “last name first name initial.” Using the Quick Search Page to search for an attorney or agent named John E. Doe, you should enter “Doe John E” in the Term 1 text entry box and select the Attorney or Agent field from the drop-down menu. Using the Advanced Search Page, to search for an attorney or agent named John E. Doe, enter LREP/”Doe John E” in the Query box.
Note that you cannot truncate within a phrase enclosed in quotes.
I think this is great, but Mike oversimplifies the process a bit by apparently assuming that most inventors are the listed patent counsel’s clients. Inventors for an assignee/employer often have little say in the employer’s choice of patent counsel, and may have a skewed perspective of the process.
Also, and I’m not sure how much this factor would come into play, but it seems that this method will run right into conflict-of-interest situations, especially if an inventor specifically looks for patent counsel who is prosecuting the same kind of inventions in the same technological field.
Many toy patents are by lone inventors or start-ups where there is choice of attorney, so Mike’s experience makes sense. Add the step of filtering out patents assigned to large corporations or universities if you want to talk to inventors who chose their attorney.
But I’ve found many inventors are happy or unhappy with their attorneys FOR THE WRONG REASONS. A warm, friendly, smooth-talking attorney who works fast and on time might get rave reviews, when the work itself is dismal, and a brilliant but less personable attorney might get a thumbs down, especially if the attorney correctly told the inventor that the invention faced prior art problems and needed to be narrowly claimed.
So don’t just ask for an overall evaluation. Take a look at the patents the inventor got and see if they appear strong, thorough, etc. (and look at other patents from the same attorney), and then ask detailed questions: How did they interview you? How did they help you frame the invention? What different claim strategies were considered? How was the prior art examined? Did you get guidance on foreign filing strategy? Were you encouraged to strengthen your filing with defensive publications? Did you get guidance on building an IA estate? Were licensing opportunities considered in the drafting of the patent? What discussions of enforceability did you have? What was discussed around obviousness?
Excellent advice. And you just happened to use my hometown (Madison, WI) as an example.
The main problem with his suggestion is that quite often an attorney’s name will not appear on the patent–his firm, or the applicant’s attorney, may appear instead.
Stephan is completely right, searching by attorney name won’t necessarily retrieve a list of all patents the attorney has written.
The “attorney or agent” field is determined by what gets typed (by the patent firm or applicant) on the allowance documents. Some patent firms will put the attorney’s name, some will ONLY put the firm’s name, etc.
Also, the USPTO points out that:
I think this is great, but Mike oversimplifies the process a bit by apparently assuming that most inventors are the listed patent counsel’s clients. Inventors for an assignee/employer often have little say in the employer’s choice of patent counsel, and may have a skewed perspective of the process.
Also, and I’m not sure how much this factor would come into play, but it seems that this method will run right into conflict-of-interest situations, especially if an inventor specifically looks for patent counsel who is prosecuting the same kind of inventions in the same technological field.
Many toy patents are by lone inventors or start-ups where there is choice of attorney, so Mike’s experience makes sense. Add the step of filtering out patents assigned to large corporations or universities if you want to talk to inventors who chose their attorney.
But I’ve found many inventors are happy or unhappy with their attorneys FOR THE WRONG REASONS. A warm, friendly, smooth-talking attorney who works fast and on time might get rave reviews, when the work itself is dismal, and a brilliant but less personable attorney might get a thumbs down, especially if the attorney correctly told the inventor that the invention faced prior art problems and needed to be narrowly claimed.
So don’t just ask for an overall evaluation. Take a look at the patents the inventor got and see if they appear strong, thorough, etc. (and look at other patents from the same attorney), and then ask detailed questions: How did they interview you? How did they help you frame the invention? What different claim strategies were considered? How was the prior art examined? Did you get guidance on foreign filing strategy? Were you encouraged to strengthen your filing with defensive publications? Did you get guidance on building an IA estate? Were licensing opportunities considered in the drafting of the patent? What discussions of enforceability did you have? What was discussed around obviousness?