This is a terribly difficult question, particularly for someone new to the patent world. I’ve been hiring patent attorneys for a couple of decades and made plenty of mistakes myself.
One key error: many entrepreneurs naturally tend to over-focus on technical/scientific background of the patent attorney. While that is important, patent attorneys without the direct technical background still have the capability of learning and applying your technology, and few will say they can’t handle it. One caveat: if your business is biotechnology, you should at least ensure the patent attorney has a background in life sciences. If your business is in the physical sciences (e.g., mechanical devices, medical devices, software, electrical, consumer goods, etc.), you should ensure that the patent attorney has a background in physical sciences.
There are many factors to consider beyond technical/scientific experience, such as:
- How long has this person been a patent attorney? Do they have relevant experience?
- If they have been practicing less than 6 years, do they have an experienced supervisor managing them?
- What kinds of clients do they currently handle?
- Do they have experience with startups? Entrepreneurs?
- How would they work with you? Run a few scenarios by them or ask for examples.
- What are their charges for typical tasks, such as writing patent applications, responding to US Patent and Trademark Office rejections, etc. Note: hourly rate may be deceiving. Ask for total costs of these typical tasks you should expect to pay. If you spend an hour interviewing a candidate patent attorney and that patent attorney doesn’t discuss costs, it may raise a flag.
- Ask for references. You could look up this attorney online and see some of their clients and ask to speak to specific clients so you don’t get the “cherry-picked” clients of the attorney.
- Do they do the work or hand it off to a junior person? Who does the work?
- Do they just write patents or have they been involved with litigation, diligence, opinions and other activities that apply patent rights against a product, formulation, method, etc.?
- Do they have supplemental experience that can enhance their representation of you (e.g., personal startup experience? Investing in startups? Teaching experience?)
- Do they have experience with patenting overseas?
- Who is on their team?
- How comfortable are you working with this attorney?
Steven Saunders is an Intellectual Property Attorney at the Boston-based law firm, Nutter. Steven can be reached at ssaunders@nutter.com.
For more information about Steven, See Steven’s Martin Trust Center Biography at: https://entrepreneurship.mit.edu/profile/steven-saunders/