Should I Use a Local or National Patent Attorney?

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First, let’s discuss the advantages in using a local attorney.

For one thing, some people are just more comfortable working with someone local, someone that they can easily meet with. It makes some people feel better knowing they can just hop in the car and drive over to their attorney’s office. Also, if they need to bring their invention prototype over, they can usually do that easily. That way they can sit down with the attorney and actually point out how their invention works. And, if the attorney needs something else, they can usually just drive over and drop it off if they choose to. If this describes you, then it may be best for you to seek out an attorney to represent you based on their geographical proximity.

Patent Law is National

Now, on the other hand, consider these facts. Patent law is national in scope, and is not state or county regulated. By its very nature it encompasses the whole country, which is important in that the protection the inventor is seeking for his/her invention will also be national in scope. Therefore finding an attorney who is a member of your state bar is not germane.

Patent attorneys must be registered with the US Patent Office, and are authorized to represent clients anywhere in the world. So as far as the USPTO is concerned there is no need for the attorney and inventor to ever meet in person. In fact, foreign entities regularly file US patent applications, and for the most part never need to meet face to face with the attorney doing their work. Remember, this is an electronic age now, and with email readily available information can be transmitted at almost the speed of light.

Applications are Submitted in Written Formats

So where the attorney is located is not an issue. Your written materials, drawings and diagrams can be easily emailed to your attorney, and he/she will have it faster than you could hop in the car and drive even a couple of blocks. Also, remember that as far as your invention prototype is concerned, the USPTO will never look at it directly. Your patent application will be submitted in typed format, with diagrams/drawings prepared in acceptable USPTO format. So the inventor should be prepared to describe the invention in the same terms that the USPTO requires. And that does not require a face to face meeting. But it does require that your application be submitted in writing with acceptable drawings. And this material can certainly be transmitted electronically or by courier service, fax machine or regular US mail.

Concentrate on Qualifications

So don’t get hung up on your attorney’s location. Concentrate instead on the attorney’s qualifications. I recommend you look for the following attributes when making a decision on which attorney you wish to represent you:

Does the Attorney Understand Your Concerns?

Does the attorney take the time to listen to you? Does he/she understand your goals as far as your invention is concerned? Does the attorney ask you to explain precisely what you are seeking to accomplish with your invention?

Is Cost Clearly Defined?

Is the attorney’s pricing structure clear and understandable? Does the attorney explain the patent/trademark process in understandable terms? Are all charges discussed, not only what you will pay up front, but also subsequent fees during the process?

Does He/She Have Experience in Your Technical Area?

What are the attorney’s qualifications? Does the attorney indicate competency in the technology of your invention?

Is He/She Readily Available?

Is the attorney readily accessible? When you call or email, do you get a timely response? In my experience, more than one day to receive a response is too long. Usually a response within a few hours is what you should expect.

Are References/Reviews Available?

Can the attorney provide references or testimonials? Usually an established IP law firm will have satisfied clients.

Is there a Support Structure in Place?

Does the attorney provide an adequate support system? If the attorney you are working with retires, or becomes unavailable, is there a structure in place to continue to provide you service? Remember, the patent application process can go on for years, and the other related invention services can be ongoing. So try to select a firm with adequate backup services, so that if your attorney is not available someone else will know your case and be able to continue with your work.

How Will USPTO Actions be Handled?

How will the attorney handle USPTO Office Actions? These are regular occurrences, involved in both the patent and trademark application process. Is your attorney experienced in responding to Office Actions? Note: here is one aspect where the attorney’s physical location can be quite important. Often a face-to-face meeting with the USPTO examiner is the difference in getting your patent application approved. The USPTO examiners are required to provide an in person interview if requested. Having an attorney located in proximity to the USPTO can provide the inventor a strategic advantage, and also save the inventor money.

Are Other Potentially Necessary Services Available in the Same Place?

Does the attorney provide a full range of IP services, or is he/she limited in the services provided? Most patent attorneys can provide basic patent searches, applications drafting and prosecution services, but not all are capable of providing infringement analysis, freedom to operate assessments, highly technical applications drafting, contract reviews, licensing agreements and litigation if necessary. Make sure you ask your attorney how these issues would be handled.

In my opinion, selecting an attorney based on these attributes is far more important than finding one located near you.

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