A patent attorney or a patent agent in India submits the patent application in the Indian Patent Office. A patent agent has knowledge about the patent law and rules related to patent office procedures. The patent application draft can be prepared only be a person who is well versed with the patent law and hence the need for a patent attorney. Thus, although the inventor has the technical knowledge related to the invention but he might not have the necessary expertise to draft an effective patent application.
Steps involved in choosing a patent attorney or agent
- The first step involved in choosing a patent attorney or agent is to obtain information about patent agents who can provide efficient legal representation. This selection can be done from an intellectual property specializing firm, local bar associations, patent agent register and Indian patent office website.
- The next step involves deciding what information would be required to choose the firm or the individual that will provide the service. One has to analyze their business needs. The inventor who opts for the patent service would like to know about the technical and scientific knowledge, legal education and patent experience of the patent attorney not just in terms of number of years but also in terms of the nature of the experience and how relevant it is. The patent attorney’s experience should be relevant to the needs of the project. One also has to analyze whether the representation would be for a longer duration requiring diverse talents or would be just limited to a single project.
- Once a preliminary research is done and a few patent attorneys or agents are shortlisted, the next step is to schedule a preliminary interview with them. One should so proper research prior to the interview and be prepared with a list of questions for the attorney so that two way communications occurs. A few possible questions are- What are some of the patent registrations done by the patent attorney in the past? How long the process takes and how much would it cost? One can also ask for references of past clients from the patent attorney.
- The next step involves finding out what fees would be charged by the patent attorney. The person seeking the service can be weighing other alternatives of getting portions of the work done from other legal firms who will charge a lesser rate. One can look for alternatives to hourly billing such as fixed fee arrangements and alternate bill arrangements.
The process of evaluating the patent ability, obtaining and licensing a patent is a team project and so coordination is important between the team members. The inventor should share a certain comfort level with the patent attorney. The extent of engagement and participation of the inventor should be decided beforehand.
What factors and personal attributes should we consider while selecting a patent agent?
Patent agent fees should not be the only consideration
Price should not be the only consideration in selecting a patent agent. Price should be considered only after the selection has been made based on the patent specializing firm’s reputation and the patent attorney’s expertise. A patent’s value is determined by how well it is drafted. The attorney should be able to specify the proper claims so that others cannot easily copy. The refusal of the patent can cause loss of money and time to the inventor. A patent attorney should be selected based on how many patent applications they have written in the past and how many have been accepted. The patent attorney past credentials are much more important and so fees cannot be the sole consideration.
The qualifications of the patent agent
Patent agents may have a scientific educational background or education in a particular field of engineering. A patent agent who has an educational background similar to the particular field in which your invention lies is generally preferred. The patent agent is then able to better understand the invention and the concepts related to the invention.
Efficient customer service
The patent agent one selects should also have good customer service skills. The patent agent one selects should be available to attend to your calls and give adequate attention to your requirements. One should ensure that the agent with whom you are communicating should be the person who is handling the case and he should not hand over the case to some other less qualified individual in the intellectual property specializing firm.
Past success of the patent agent
The success rate of the patent agent being considered is important. One should look for specific information such as how many patents have been written by him in the past and how many have been issued. Getting a patent issued is a challenging task and an agent who has done so skillfully in the past can be trusted as an experienced patent agent.
Clarity of the patents drafted by him in the past
One can ask for a few patent applications drafted by the agent in the past and read it. If he does not find it to be clear and understandable then it is possible that even the jury would not find it easy to understand. A well written application is concise and easy to understand.
The patent agent who writes the patent application should have experience with litigation. The patent attorney should be skilled enough to be able to defend the claim.
Common sense is an important attribute that is required in a patent agent. Sometimes patent agents become so engrossed in the details of the patent that they forget that the real objective is to make money for the company which is filing the patent.
Time management skills
A good patent attorney should have the skill to efficiently manage his time and address his clients’ needs adequately.
People management skills
Most often after filing the patent in the patent office in India, it gets rejected. A good patent attorney usually sets up a meeting with the patent examiner who has reviewed the application to discuss the reasons for which the patent was rejected. A skilled patent attorney can negotiate well and can find a way out.