The following article appears in the journal JOM, 51 (10) (1999), p. 48. JOM is a publication of The Minerals, Metals & Materials Society

Questions to Ask in Selecting a Patent Attorney

After making an invention, what do you do next? The most important step is selecting a competent patent attorney who can determine if it is patentable; obtain appropriate patent protection for the invention; and, through direct entry or licensing, help you get the invention into commerce.

Inherent in this discussion is the assumption that the inventor has resisted the temptation to act as his or her own patent attorney. Also, it is assumed that the temptation to deal with invention promoters has been avoided. An article in this series, "Invention Marketing: Let the Seller Beware," which appeared in the September 1997 issue of JOM, dealt with this subject.

While this article focuses on an inventor requiring the services of a patent attorney, similar issues of investigation and information-gathering apply for other areas of intellectual-property law, such as trademarks, copyrights, trade secrets, infringement and validity studies, and litigation.

The first phase in selecting a patent attorney is obtaining information about attorneys who might provide effective legal representation. There is no single best way to obtain this identification. A law firm that has intellectual-property attorneys or friends who have worked with patent attorneys can be a starting point. Local bar associations can frequently provide information, as can legal directories, such as Martindale Hubbell. The U.S. Patent and Trademark Office has a publication that lists patent attorneys and patent agents admitted to practice before the office. Yellow-page telephone directories also have listings of patent attorneys.

After obtaining the names of one or more candidates, the focus shifts to what information is needed to make a decision on whether a particular firm or individual can provide the desired service. A critical factor in this phase is the inventor's willingness to ask questions.

It is important to know the technical and scientific educational background, as well as legal education and patent experience, of the attorney, both in terms of years of experience and the nature of that experience. Is the attorney's education and experience level commensurate with the needs of the project or projects? Is the representation to be long-enduring and require diverse talents or is it likely to involve limited work on a single project? The attorney pre-paring and prosecuting a patent application must be admitted to practice before the U.S. Patent and Trademark Office. This is a separate admission above and beyond admission to practice before the bar of a particular state and requires the individual to satisfy certain requirements as to tech-nical education and character and pass a demanding examination.

Another important question is the recommended sequence of events for filing the patent application. For example, is the attorney recommending a patentability search followed by, based upon the results, the preparation and filing of a patent application? Does the attorney have experience in seeking potential licensees and negotiating license agreements? Does he or she have the capability to seek corresponding international protection? Does the attorney have established relationships with competent non-U.S. patent attorneys and agents who can provide quality representation for a reasonable fee?

It is important to ask about fees; it is appropriate to determine what attorney's fees and disbursements are involved in proceeding with the work. Are there others in the law firm who are capable of doing portions of the job, with or without supervision, at a lesser rate, thereby saving the potential client money? It is also appropriate to inquire as to whether, in lieu of hourly rate charges for attorney's fees, alternate billing arrangements, such as fixed-fee arrangements, are available.

The comfort level of the inventor with the particular attorney or attorneys is also important, as evaluating patentability, obtaining a patent, and licensing the same involves a team project. The extent to which the inventor is able to assist and desires to participate actively is another variable that should be explored in terms of the manner in which the attorney prefers to work. It is appropriate to ask for professional and client references and, to the extent to which client confidentiality is not involved, the opportunity to see examples of the indi-vidual's work. In turn, the attorney, as a matter of professional ethics, is obligated to check to determine if there is any conflict of interest in undertaking the representation. In some instances, even if a conflict or potential conflict exists, the clients may waive the conflict.

The client should request that the attorney reduce the engagement understanding to writing. In some states, a written engagement letter specifying the scope of work, fees, special payment arrangement, and other terms of the attorney-client relationship is required. It is also desirable to ask for estimates of time periods involved in various stages of the work, at what point input or assistance from the client might be required, and the nature of such assistance.

While no single set of questions will be fully adequate for every situation, these guidelines provide a reasonable starting point. Questions related to items of particular interest to the potential client and items that provide unique circumstances for the case should be considered. In any event, it is critical that the potential client do a thorough job of asking all questions of interest and reach a comfort level with a particular attorney before entering into an attorney-client relationship.

Arnold B. Silverman is chair of the Intellectual Property Department and a member of Eckert Seamans Cherin & Mellott, LLC.

For more information, contact A.B. Silverman, Eckert Seamans Cherin & Mellott, LLC, 600 Grant Street, 44nd Floor, Pittsburgh, Pennsyl-vania 15219; (412) 566-2077; fax 9412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.