Five questions to help you choose a patent professional

5 questions for a patent pro

Say you’re shopping for a new car. You pop open Edmunds or MotorTrend and read a few reviews. You know which aspects or features upon which you will compare the cars; what sort of gas mileage does it get, how long and how much does the warranty cover, what additional bells and whistles does the car include? Then you might visit Consumer Reports to see if they have anything to say before checking how the car will affect your insurance premium. By the time you show up for a test drive, you’re already about 90% sure it’s the one you want and you know how much you’re willing to pay for it.
Law doesn’t work that way. Sure, there are some prestigious rankings like the AM Law, but they don’t score every law firm, and they certainly don’t score what your particular experience will be like. So how do you choose a patent professional to protect your company’s valuable technology? And what should you even look for?
These are the top five questions you should ask to determine whether a prospective patent professional is the right choice to draft your company’s patents.

Does your domain expertise match my products/services?
Typically, a law firm’s web page will include bios of each member of their drafting team (here are ours, for example). The assumption is that if several members of the team have expertise in your area of technology, then the firm will be competent to handle patenting your technology. This is important but it is also vital to use someone who can find relevant prior art fast because the available information about patentable concepts is growing at such a fast rate that it’s impossible for one person to stay informed about it all.
Can you show me examples of applications you’ve written in a domain related to my idea?
Perhaps a better way to get a feel for a firm’s ability to draft your patent is to request a few example applications the firm has written in a domain related to your invention. This will give you a sense of the patent professional’s ability to accurately describe a similar invention. Alternatively, you could ask for a law firm’s profile that should include success rates for each art unit. You could then look at the number of applications drafted and the number of patents granted for the art units your invention will likely fall in (e.g., the art units suggested by Invention Hub) and conclude similar success for you technology.
Do you have extensive drafting experience?
Most law firms will just ask you to trust their drafting expertise and cite their 30+ years of experience or high AM LAW rankings to support their claim. However, at TurboPatent, we’ve run many patent applications drafted by these long-time firms with high AM LAW rankings through our RoboReview patent analysis tool and often find errors that can lead to USPTO objections and longer grant times. If you’re curious about any of your patents we’d be happy to run a report on a few of the applications you’ve filed. You might be surprised.
Do you use technology to improve the drafting process and application quality?
Technology is spreading through the legal industry and some practices are using it to deliver efficiencies, cut costs and provide faster, higher quality results for clients. However, many attorneys are slow to adopt new tools, especially technology, so make sure to select one that is doing everything he/she can do to provide you with the best final product.
Plus, since you’re likely paying a patent professional by the hour (though there are flat-fee alternatives) the efficiencies introduced through technology can end up saving you tens of thousands of dollars over the patent drafting and prosecution process.
Can you provide analytics on patent application performance rates?
Aside from simply trusting a law firm, you can ask if they have numbers on the types of rejections they receive. For example, a firm that receives a lot of 112 rejections (problems with the form of the patent application) is probably working too quickly, without giving their work careful consideration. A firm that often receives 102 rejections (lack of novelty) likely doesn’t know enough about the technology that’s already out there and is drafting claims that conflict with prior art.
Thus, by checking the technology backgrounds of the drafting team, their performance record within likely art units, and their rejection record, you can get to that 90% you are used to as a modern consumer. Then ask for a free consultation to try the firm out. Some might even give you a money-back guarantee on drafting your first application like we do at TurboPatent. Once you have all the information, the choice should be clear.