September 7th, 2016

How to Select a Patent Attorney

Some criteria to look for when choosing a patent attorney include:

Experience writing and defending patents

A patent attorney who has a lot of experience will know what the USPTO expects in terms of the patent content, and will tailor your patent to fit those expectations. In addition, an attorney who has experience working with the patent examiners at the USPTO will better know what arguments to present on your behalf during the prosecution phase.

Litigation background

A patent attorney who has been involved in litigation of patents, either for infringement purposes or other aspects of patent law has an understanding of what will hold up in court and what is likely to be challenged, and how to meet those challenges with arguments of his or her own.


Any patent attorney you choose should return your phone calls! They should answer any questions you have to the best of your ability.

Search criteria

A search is essential for identifying prior art. Prior art is the set of patents for inventions that are similar to your invention. An experienced searcher knows what terms to use and how to identify relevant prior art. If there is prior art that is very close to your idea, then you can’t get a patent on your invention. It will most likely get rejected by the patent examiner, and you need to know that before you invest any money. If there is prior art that is close but not too close, then you need a patent attorney to help determine if there is a possibility of obtaining a patent.

Length of time to complete the patent search

It should take only 1-2 weeks to get your search results. It may take a little longer (1 week) if the field of prior art is crowded with many inventions that are similar to yours.

Length of time to complete the patent

This partly depends on you, because you should be involved with every step. After either meeting with the attorney to describe your idea or sending him or her the invention disclosure, the attorney should work with you to draft the claims. This should happen within 3-4 weeks of your meeting (the attorney needs time to draft some rough claims to discuss with you). After the claims are drafted, they are sent to you for review and/or revisions. Once the claims are written to your satisfaction, the drawings are requested from the draftsman; after the drawings arrive, the specification is drafted. This takes another 3-4 weeks for a relatively simple patent. Depending on the complexity of the patent and your responsiveness, you should have a first draft to review within 2 months of hiring a patent attorney. Of course, a more complex patent will take more time, usually an additional month or two. The patent should be filed with the USPTO within a week of your approval of the final draft.

Experience with international patents

A patent attorney should know what the requirements, including timelines, criteria, and rough costs are of filing internationally.


One response to “How to Select a Patent Attorney”

  1. Duncan Lance says:

    I do like that the article points out the need to hire a patent attorney that has experience defending patents. After all, defending a patent in court is not something that an inventor usually thinks that they will have to do. However,if that does happen then you’ll feel much more at ease if your patent attorney has done it several times before.

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