Written by attorney Deepak Malhotra

How to Choose a Patent Attorney

Patent litigation is a high cost, high stakes endeavor with many pitfalls for the unwary and inexperienced. If your patent application is not skillfully drafted and prosecuted, there is a risk that it will not be valid and enforceable in litigation.

Here are some tips on how to select a patent attorney, and how to evaluate their work product.

Patent attorneys often know which other patent attorneys are skilled in a community. Start by asking in-house patent attorneys and retired patent attorneys (who have no vested interest in recommending one firm over another) for recommendations.

Find patents written by a patent attorney and see what companies trusted that patent attorney with their precious intellectual property.

If you are still in doubt, ask the attorney for some sample patents (my website has samples of patents I have obtained for various clients). Review the patents against this list of poor practices:

  1. Is the Title narrower than the broadest claims? If the claims include both methods and appartus, does the title have only one or the other?
  2. Is the Field section narrower (more specific) than the broadest claims?
  3. Does the Background section characterize prior art, admit prior art, or suggest solutions to the problem?
  4. Is the Summary section narrower (more specific) than the broadest claims?
  5. Is the Abstract narrower (more specific) than the broadest claim?
  6. Are there features in the claims that are not shown in the drawings?
  7. Does the description of the views of the drawings not clarify that each figure is for a certain embodiment as opposed to being of the invention?
  8. Is there "patent profanity" in the Detailed Description (use of words such as "much," "necessary," "necessarily," "essential," "always," "required," "important" or other similarly strong words).?
  9. Does the detailed description contain too much detail that is not needed to provide enablement or best mode for the claims?
  10. Is the description not sufficiently clear or detailed to enable someone of a low skill level to make and use the invention described in the claims?
  11. Is the broadest claim very long and full of terms that are difficult to understand?
  12. Are there only a few claims?
  13. Is there only one type of claim (all claims are method claims or all claims are apparatus claims)? This is only a problem if there is only one patent for the invention.
  14. Do the claims only cover a small subcomponent of a sellable product?
  15. Are there terms in the claims that are not clearly understandable?
  16. Are there claims for features that are not described in the Detailed Description?

This list is not complete but should give you can idea of the complexities of patent law. If you only understand some of the questions above, that will give you a better insight into a patent attorney's skill level than many people have.

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