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How do you best evaluate a patent attorney? Has anyone worked with one they recommend and why?

How do you best evaluate a patent attorney? Has anyone worked with one they recommend and why?

16 Replies

ROBERT H LEE
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ROBERT H LEE Entrepreneur
Research Fellow in Law, Science & Technology @Stanford University
It's not that easy to evaluate one because patent drafting is a pretty subjective art. There are many ways to draft a good one, and even more ways to draft a bad one. You can try to get metrics on % of patent successfully allowed and/or litigated. but these can be very hard to come by. I can make a few recommendations if you like, if you tell me your field.
ROBERT H LEE
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ROBERT H LEE Entrepreneur
Research Fellow in Law, Science & Technology @Stanford University
I should add, probably the easiest thing for a technical person to do is to make sure the patent attorney simply understands your technology. And maybe have him or her draft a claim or two for you and explain to you why the claim is broad and defensible. But other than that, client recommendations are probably the best way to go.
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Entrepreneur
I really recommend search FD:Discuss before posting, just a ton of great discussions on this already.
Daniel Eliezer Weisman
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Daniel Eliezer Weisman Entrepreneur • Advisor
Head of Office at The Weisman Family Foundation
It would be Telematics/ Big Data. I know there's a ton of telematics patents out there, but this would be an extension beyond with application to a new industry.
Leena Chitnis, MBA
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Leena Chitnis, MBA Entrepreneur • Advisor
Content & Publication Manager at NetApp
I recommend my counselor, Jon Stechmann, who has filed patents himself, for his own ideas. He works at an excellent AM 200 law firm -- Oppenheimer, Wolff & Donnelly. Message me for details if interested.
Scott Milburn
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Scott Milburn Entrepreneur
Entrepreneurial Senior Executive and Attorney
Adam Phillip in Seattle is great. He has a firm, AeonLaw, that specializes in startup/early stage technology company patent work. www.aeonlaw.com. I believe he is also an FD member.
ROBERT H LEE
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ROBERT H LEE Entrepreneur
Research Fellow in Law, Science & Technology @Stanford University
Ron Rohde in Silicon Valley would be excellent at this. He is a solo guy:
[removed to protect privacy]

Here's another one in Seattle you might consider:
http://rimonlaw.com/team/ronnie-stern
Rob Gropper
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Rob Gropper Entrepreneur
Director at PetHero, SPC - Member at Eastside Incubator - Principal at Tuxedo Technologies Group
Daniel, not much different than evaluating any other professional service provider: experience, reputation, trust, compatibility (work style, communication style, etc.), cost, billing practices, etc. get references. If you are filing methods patents in the area of software, for example, you will want an attorney who has a CS degree or EE who understands software dev and can speak your language - s/he needs to translate your language into patent language. You can search USPTO.gov by attorney (don't quote me on that) and talk to the inventors. Also depends on what you want to get out of your patents - some marketing millage to say "we have patents" or do you want strong patents to defend your market and/or defend against legal action? If you want strong patents VS just marketing patents then talk to the references about how this attorney prosecuted their applications. Strong patents takes a smart attorney that is willing to go toe-to-toe with the examiner and make as few modifications to claims as possible. An inexperienced attorney will respond to office actions by modifying / weakening claim language. Standing up to the examiners takes time and $$$ so you need to agree on prosecution strategy. There is also patent portfolio strategy so the better attorneys can help you with this - has to do with types of claims, number of applications (1 VS many), do we allow some claims now and continue to prosecute others?, keeping continuations in play, do we push for allowances as fast as possible or take our time to let the market develop? , etc.
Tony Leonard
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Tony Leonard Entrepreneur
Founder @nurseVersity @ptVersity | #500Strong (b16)
Where are you located?
Daniel Eliezer Weisman
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Daniel Eliezer Weisman Entrepreneur • Advisor
Head of Office at The Weisman Family Foundation
Los Angeles, but I work very well remote.
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