Selecting Intellectual Property Law Firms

These are my tips on picking the right law firm to handle your intellectual property.

Specialization

First understand that law firms, like most businesses, specialize in different areas of the law. While I was lucky enough to retain attorneys that handle both patent prosecution (patent filing) and licensing, most firms actually specialize in one or the other. Just because your Uncle's brother drafted patents for the snake light, doesn't mean he has a clue on how to draft a software-based patent.

Search current patents in your field of invention

Attorneys are typically listed in the patent application. While this is a great way to get an idea of which attorneys specialize in a particular field, there are potential pitfalls here as well. For one, the attorney listed may have been recently assigned the patents as part of the portfolio for licensing purposes.

When I reviewed patents around our payment card process, I kept seeing the name "Kilpatrick Townsend" come up. They were not only listed on the majority of patents applications but on those applications that were well drafted. As it turns out, Kilpatrick Townsend handles the patent portfolio for Visa and they were often assigned the patents later in the process. Other attorneys wrote the patent but now Kilpatrick was the firm showing up.

I decided to search the U.S. Patent & Trademark site as part of my screening process. This is an excellent idea, so long as you have the correct name and partner as noted in their applications. Many times only one partner is listed on all the patents regardless of who actually filed, so make sure you search the correct partner.

University resources

Universities are hubs of invention. Find a school that specializes in an area close to your field of invention than ask if there are any attorneys they would recommend. I found that schools to be a great source for locating patent attorneys that specialize in highly technical and scientific fields.

Jr. Attorneys

Okay, you found the attorney you love but at $450 an hour can you afford it? Partners usually cost you more than junior staff. Often, the junior staff actually writes the patent application, which can save you a lot of money and the partner reviews it. You need to clarify this is the case upfront.

Write it yourself

While I normally don't recommend writing the patent due to the nuances in patent law, if you are an expert in your field and up-to-date on the latest developments, you may be the best person to write it. Besides, who describe your invention better than you. Big mistake if you don't know patent law, too many pitfalls. However, I would recommend writing the provisional patent application (throwing in everything including the kitchen sink) but let the pros write the final patent.

Be done with it

Do your homework but select someone and file it. Remember time is of the essence with patents and you do want to file before your competition! Good luck.