- Before hiring a patent attorney, ask about their specific technology background, since a mismatch between the attorney’s technical expertise and your invention’s field can lead to serious errors.
- The article gives an example of a law firm partner without an electrical engineering degree who wrote that a resistor could be “in” a piece of software, illustrating the risk of a technical mismatch.
- Many patent attorneys have very limited hands-on industry experience, often spending only zero to two years in the workforce before attending law school, so technical degree alone may not be enough.
- Thompson Patent Law says it only hires attorneys and agents with at least a B.S. in Electrical Engineering plus industry experience, and will refer out work involving biology, DNA, or pharmaceuticals rather than take it on themselves.
- The article warns that a patent attorney who claims to be able to handle “everything” should be treated as a red flag, since deep expertise in one technical area is more valuable than broad but shallow familiarity.
There are specific questions that inventors should be prepared to ask when choosing a patent lawyer to ensure he or she is the right fit to help grow their business.
You want to ensure that your attorney not only speaks “fluent engineer” as we like to say, but that his or her background is really in sync with the type of patent you are seeking to pursue.
Very few people ask about their attorney’s legal and industry experience, but doing so is a must. Here are two important questions we advise inventors to ask any patent attorney they are considering working with.
What Is Your Technology Background?
The first experience that frequently makes a huge difference in whether your ROI is positive or negative, is the technology experience a patent attorney brings to the table.
For example, if you have an invention that sounds in the electrical engineering arts, then you should not settle for a patent attorney who is not an EE.
What we frequently see is that many law firms list their attorneys as having questionable “experience” and clients fail to realize what a danger such “questionable experience” can be.
One time, we actually saw that a well-respected partner in a law firm put into writing, for a client, that a resistor can be “in” a piece of software. Needless to say, that partner did not have an EE degree.
What Is the Depth of Your Industry Experience Outside the Legal Field?
Even when you find a patent attorney with a perfect degree for your technology, most patent attorneys have very limited industry experience (frequently none) because they only spend 0-2 years in the workforce before they go to law school.
If I were the client, I would be asking about my patent attorney’s technical background and industry experience combined.
Here at Thompson Patent Law, we hire patent attorneys and patent agents who have at least a B.S. degree in Electrical Engineering, and a number of years of industry experience.
Our focused depth of experience in the Electrical Engineering arts allows us to quickly come up to speed and envision alternative embodiments for inventions. We speak the language that inventors speak and routinely get high value, ROI-generating patents that involve technologies such as:
- Analog and digital circuits, sensors;
- Software, mobile device apps and SaaS business models;
- Electro-magnetics, electric machines, power electronics;
- Signal processing, audio;
- Energy efficiency, and energy management systems;
- Embedded systems, lighting, LED, optical systems;
- Medical devices, surgical tools and equipment;
- Communications, RF, EMC;
- Semiconductor fabrication processes and systems;
- Robotics, control systems; and
- Mechanical and electro-mechanical devices and systems.
More importantly, we can promise you that if you ask us to patent something involving biology, DNA, or pharmaceuticals, we will refer you to someone with the right technical background, because it won’t be us!
And honestly, that is what you want when choosing a patent lawyer. If you are seeking a patent attorney that claims to be able to handle “everything,” consider that to be a huge red flag!
Remember, a Jack-Of-All-Trade is most often a master at NONE.
Is Thompson Patent Law a Good Fit for You?
Maybe. The best way to find out is to contact us. We’d be happy to meet with you in person or over the phone to discuss your invention. If we are not a good fit for what you are seeking to achieve with your technology, we will personally refer you to someone that we confidently trust to help you in your patent journey. To schedule a consultation, simply call our Austin-area patent firm at (512) 746-7963.
