We are often reminded how important it is to choose the right firm to work with. Take for example the experience of one entrepreneur who started a business a few years ago to produce novel software for streaming media. At inception, the business took steps to protect its intellectual property, including pursuing patents and trademarks. For its patent applications, the business selected a fairly large, nationally recognized firm. As you can probably guess things did not work out so well. Once that the patent application was being prosecuted, the business started having a hard (expensive) time getting meaningful patent protection from the patent application filed by this firm.
Unfortunately, this is not an isolated case and small businesses are not the only ones that fall into this trap. Indeed, we have first hand experience fixing the applications prepared by other firms for clients that paid these firms large sums of money.
So how does one avoid falling into this trap? Answer: the firm that is selected must be a good match for your business. Here are a few variables to consider:
1. The size of the business and that of the firm - Larger firms generally have more resources to service larger clients. Unfortunately, these firms typically provide preferential service to their larger clients. As a result, work for small clients is typically handled by junior associates with little or no supervision. Smaller firms do more work for individuals and small businesses, which translates into more attention for these clients.
2. The experience and background of the firm that will actually prepare the patent application - Generally, the more experience that a practitioner has the higher probability of getting good quality patent. Also, we prefer that firms have more well rounded business experience. We find that firms with this additional experience do a better job avoiding problems that only show up when applicants are trying to monetize their patent. The practitioner's background should also match the technology that applicants are pursuing.
3. Cost - The practitioner's rates must fit within the applicant's budget. Larger firms typically charge more to cover their substantial overhead. Smaller firms have better control over their overhead, which typically allows them to charge less. Note, the hourly rate varies based on the practitioner's level of experience as well as other factors. Therefore, a higher hourly rate does not necessarily translate into a higher overall cost as senior practitioners, in smaller firms, typically require less time to complete a task as compared to their junior counter parts in larger firms.
4. Recommendations as well as criticism from similarly situated peers should be taken into consideration.
As I hinted above, we have had a lot of experience fixing patent applications that were mishandled by others. In most of these instances, the owners of these applications could have avoided costly mistakes by simply doing their homework and asking tough questions before selecting a firm for their patent applications.
On a side note, there are a number of invention promoters/promotion firms that offer inventors patent and marketing services for their invention. We have heard that a number of them are unscrupulous to say the least. This is the way the scam plays out. An inventor contacts the company for a consultation. The company tells the inventor that it is a great idea (regardless of the merits of the idea) and that they would like to market the invention for them. The inventor typically has to pay the up front costs of the patent application and the up front costs for the company to submit the invention to third party companies. It is our understanding that few if any inventions are actually licensed to third parties. More information about these types of firms and scam prevention can be found at uspto.gov by clicking here.