How do I find a good patent attorney?
Finding a great professional in a specific line of work can be difficult for someone outside the profession. Professionals who are at the top of their field tend not to run large full-page ads in the Yellow Pages or lease billboard space on interstate highways. The best of the best are generally very busy and receive much of their new business from word of mouth and referrals. If you are looking for a great heart surgeon, it is unlikely that the phone directory or television ads will be a very satisfying research tool. So it is with lawyers.
The requirements for becoming a lawyer in most states are considerable. Although there are some variations, most states require a four year college degree, followed by three years of law school. Following graduation from law school, the states administer a bar exam which comprehensively tests the law school training. The California bar exam, for instance, is a three-day affair consisting of two days of essay exams and a day of multiple-choice questions. In addition to the three days of testing, a written ethics exam is also administered to verify knowledge of the rules of professional conduct.
The requirements to be admitted to the patent bar are even more complex than that of entry into the legal community. The patent bar is regulated by the Office of Enrollment and Discipline (this department of our government does not sound even remotely friendly) within the United States Patent and Trademark Office. To register as a patent attorney, in addition to having been admitted to practice law by one of the states, the attorney must have a scientific or an engineering background. Consequently, most patent attorneys have an undergraduate degree in engineering, physics, chemistry, computer science or biology. Patent attorneys must also pass a full day enrollment exam administered by the USPTO that in recent years has had pass rates well below 50%.
Overall, the process is long and tedious. Significant filtering goes on during the education process so that the large majority of admitted patent lawyers are highly skilled and intelligent individuals. However, despite the long and difficult path to bar admission, patent lawyering remains a popular profession and a significant number of lawyers are admitted each year to practice. As a result, it is inevitable that the skills of the members will vary widely. While most attorneys are excellent, there are a sufficiently large number of incompetent legal practitioners, which makes randomly choosing an attorney risky at best.
Once admitted, the practice of patent law is a relatively solitary profession. The typical patent attorney who earns a living preparing and prosecuting patent applications (negotiating with the Patent Office) spends much of his time alone writing. An average patent attorney might write from 12 to 20 patent applications per year, the equivalent of one and a half highly detailed engineering or science textbooks. Writing patent applications is one of the most difficult forms of writing in the legal profession
The training of a patent attorney is typically one of apprenticeship in which skilled senior attorneys oversee the work of the new members, providing training in the craft. Because patent claims are so critically important to the effectiveness of the patent and so difficult to write, the initial training period for the average patent attorney might last several years.
Referrals to top patent attorneys in your area can come from several sources. Check with other attorneys whose judgment you trust. Most attorneys are pretty tightly plugged in to their professional community and will be able to provide names of patent attorneys they know or know of. A second source of referrals is colleagues who have used a patent attorney and been satisfied with the relationship and results. Although it is often hard for the average consumer to judge professional services, good results and good client skills are two excellent measures of a superb attorney. Finally, check with other friends and relatives in the legal profession who work for and with patent attorneys. My wife is a cardiac nurse and is tapped into a gossip network that can provide detailed physician information on every practitioner within a one hundred mile radius. I would not think of getting a splinter pulled without first getting a referral from her network.
Contact John Ferrell at JFerrell@carrferrell.com if he can further assist you.
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About the Author
John Ferrell is a founding partner of Carr & Ferrell LLP, one of Silicon Valley's foremost technology law firms, and specializes in patent and intellectual property law matters. He is the Chair of the firm's Intellectual Property Practice Group.