Tuesday, 9 September 2014
Observations on Working with Patent Attorneys
1. The amounts patent firms charge varies tremendously. Generally this will be reflected in the quality of work that they do. When choosing a patent firm it is important to make sure that you choose a firm that is consistent with your budget.
2. You should consider choosing a high quality firm if patents are important to the value of the company and if the technology is complicated.
3. In general high quality patent attorneys will be better at drafting patent applications, responding to objections during examination and defending patents against attacks by third parties. When drafting patent applications they are more likely to foresee potential problems and devise possible solutions. They will be proactive in understanding the technology and providing a range of options at each stage. They are better at dealing with ‘difficult’ cases and coming up with appropriate strategies.
4. Bear in mind that the patent attorneys may not be able to advise on the best overall strategy given the commercial goals of the company. Their mindset may be focused on individual inventions and so they may not be in a position to have global view of what is happening. For example they may not take into account that later inventions could be more important, and therefore fewer resources should be used in pursuing patent protection for earlier inventions.
5. Patent attorneys will normally charge based on time and therefore it is important to be efficient in the way that one instructs them. Creative ideas should happen at the start of the project, but then a strict line should be followed as to what will and what won’t be included in the patent application. Constantly changing the scope of the claims during the drafting process will add to the costs.
6. Always be alert to the claim scope that is needed for each case and whether it is going to be realistically possible as examination proceeds. Regularly review cases which are in ‘difficult’ examination to make sure they are worth continuing to pursue. The patent attorneys will not be able to make these decisions for you.