Sadly, if you are not an expert in a field, it is hard to select a professional.  This is true whether selecting a mechanic, a dentist, or a lawyer.  Referral is always one of the best ways, particularly if the one providing the reference is a demanding and discriminating consumer.  Referral to an individual attorney is generally more reliable than referral to a firm, as the quality between lawyers in a firm may vary widely.

The experience of an attorney is always critical, but never more so than in patent law.  The United States Supreme Court recognized long ago that a patent is one of the most complex legal instruments to draft.  (Topliff v. Topliff, 145 U.S. 156 at 171.)  It typically takes someone from two to three times as long to become proficient in patent drafting as it does to become a proficient trial lawyer.  Although there is no magic formula, I would look to a bare minimum of five years experience in a patent attorney unless he is working under the supervision of a more experienced attorney.

Next, sit down and talk with an attorney.  Judge him as you would any other person you are meeting.  If you are a good judge of character, use that as an asset in your selection process.  And don't be afraid to, ask for samples of their work, and samples of related patents by other attorneys or firms.

There are two critical parts to a patent which hinge heavily on the skill and dedication of your patent attorney.  These are the claims, and the specification.  If you understand how and why these parts of a patent are critical, you have a better chance of competently evaluating the skill of a patent attorney.

The next two questions are devoted to the claims and the specification.

Your legal rights do not inure from the drawings, nor from the detailed description of the invention.  They vest in the Claims.  For someone to infringe your patent rights, they must infringe every element of one of the claims in your patent.  If they do not infringe every element of a claim, they are not infringing.  They owe you no licensing fees.  They are free to manufacture and sell it without paying you a dime.  Let's consider the following examples.

Example 1:      Let's assume for a moment that the table has never been invented, and that you have just come up with the idea of a table!  You describe it to your attorney in great detail, and tell him you want to patent it.  He drafts a detailed description of your invention, followed by the following poorly drafted claim:

I claim:

Claim 1.   A support device for supporting objects, said support device comprising:

a)     four vertical posts, and

b)     a square horizontal support surface resting on said four vertical posts, wherein each post is proximate a corner of the horizontal support surface.

What's wrong with this claim?  It will grant the inventor (you) a corner on the market for such tables for close to twenty years.  But it will be easy for other inventors to "design around" it.  If someone produces a table that does not have every element of your claim, they are not infringing your invention.  They may market it and sell it.  There is nothing you can do to stop it.  How many ways could someone design around the above claimed table?

·       They could produce round tables, rectangular tables, etc.  Your claim is limited to square tables.

·       They could produce tables having a single center leg with a wide support base, such as might be found in a deli or an Italian restaurant.

·       They could produce a table having two upside-down U shaped support structures functioning as legs at opposite ends of the table.

·       They could produce a table next to a wall with a cantilever beam extending underneath the table with the beam end anchored in the concrete wall next to the table.

·       If they were very avant-garde they could build a table suspended from the ceiling by cables.

In short, the patent protection secured by the above claim would be virtually worthless.  Anyone who liked your idea could design around your patent by designing a table that did not infringe your claim.  Manufacturers do not typically pay licensing fees when they can build essentially the same device without the burden of licensing fees.  The costs in securing patent rights are significant.  The purpose for patenting a device is to "corner the market" and make a good wage for your intellectual labor.  A skilled patent attorney is often the difference between a patent that is essentially worthless, and a patent that is superbly profitable.

A more valuable claim would be drafted as follows:

I claim:

Claim 1.   A support device for supporting objects, said support device comprising:

a)   a rigid member having a generally planar region, and

b)   at least one force member coupled to said rigid member, and configured to exert a force on said rigid member such that said generally planar region is disposed in a horizontal orientation.

It would be very hard to "design around" the above claim.  The "at least one force member" could be a center post type leg found in restaurant tables.  It could be two upside-down "U-Shaped" legs.  It could be three legs.  It could be a horizontal cantilever beam attached to the bottom of the rigid member (the table top) and affixed in a concrete wall.  It could be a multi-segment robat-type pivoting arm which could be moved horixontlly or vertically to allow a member of the party away from the table with minimal inconvenience.  A force member could even be one or more cables suspending the table top from the ceiling.

Ultimately, one can design around almost any patent claim.  For example, one could design around the above claim by producing a wire frame table top, where rigid wire is bent to form various shapes and sizes, and cups and bowls are suspended by their edges in respective wire frame openings.  Such a table lacks a horizontal planar area.

But such an unwieldy table design is unlikely to impact your market share, or your profits you enjoy by selling nearly every form of tables under the sun.  While your competitor makes a museum piece, you will be making a fortune.

Every good patent attorney drafts a claim with a view toward how someone might circumvent the claim.  He continually plays "devil's advocate," in his own mind, concocting ways to circumvent his own claims.  As a result, he will edit and re-edit the claims he has drafted in order to close any loop holes that another engineer or designer might exploit.  His goal should be to maximize your protection in the marketplace.

Consider another example of preventing someone from "designing around" a patent.

Example 2:      You have discovered that by heating "Anti-depressant X" to 300 degrees, and exposing it to chlorine gas, it becomes a powerful anti-cancer drug.  You have been granted three patents:  The first patent is for the compound as an anti-cancer drug.  The second patent is for the process used to synthesize it.  The third patent is the means by which it administered to a patient.  Giant Pharmaceutical company employees hundreds of Ph.D.s in chemistry and pharmacology.  They discover that, by using fluorine in place of chlorine, they produce an even more powerful anti-cancer drug.

Scenario 1:  You were fortunate enough to hire a very smart and very diligent patent attorney.  Your first two patent claims read as follows:

I claim:

Claim 1.     An anti-cancer drug comprising Anti-Depressant X (of a certain chemical structure defined in the claim) with a family VII element of the periodic chart double bonded to the carbon atom."

Clam 2.  The anti-cancer drug of claim 1 wherein the family VII element atom is a chlorine atom.

Although you did not specifically mention fluorine, it is only in dependent claim no. 2 that you limit the invention to chlorine.  Your first claim is directed to a family VII element of the periodic chart.  This includes both chlorine and fluorine.  Giant Pharmaceutical must still pay you money to produce and sell the anti-cancer drug.

Scenario 2:      You hired a patent attorney interested in "turning the crank," cranking out a patent, getting paid for it, and going on to the next one.  He has drafted the following claim for your invention:

I claim:

1.  An anti-cancer drug comprising Anti-Depressant X (of a certain chemical structure defined in the claim) with a chlorine atom double bonded to the carbon atom."

Giant Pharmaceutical company goes on to market their new anti cancer compound using fluorine instead of chlorine.  They make billions of dollars.  Since it is a better anti-cancer drug that yours, no one is interested in your patented anti-cancer drug any more.  You are forced to take a job as a check-out-clerk at the local grocery store.

The lesson:  Your patent rights are no better than the patent attorney you hire.  If you want iron clad patent protection, you need a patent attorney who has both the skill, and the will to do it right.  Good lawyering takes more than skill.  It also takes time.  You should be prepared to pay for a lawyer to "go the extra mile" in protecting your intellectual property.  And you should try to find one who has both the integrity, and the professional skills, to give you your money's worth.

Yes.  It is vitally important for several reasons.

First, claims are very technical.  It is hard for the average client to spot a well drafted claim from a poorly drafted claim.  In truth, most good patent attorneys will have times in which they spend an entire day drafting solid claims, go home at the end of a day, sleep on it, and return to work the next day only to see numerous weaknesses in the claims they drafted!  A conscientious lawyer may have to amend a set of claims several days in a row before he is satisfied with them.  How then can a non-lawyer shop for a skilled patent attorney?

There is one other portion of a patent application that hinges on the skill and diligence of an attorney, and this area can be judged more readily by the average client.  This is the detailed description.

To understand why the detailed description is important, one must understand something of patent law.  True, the detailed description does not give you patentable rights over that device.  Only the claims do this.  However, it is patent claims that are rejected or allowed, and almost every patent claim is initially rejected.  The examiner will search for "prior art" (previous patents) that describe the features of your claims.  He will mail your attorney a rejection based on that "prior art."  In response to their rejection, your attorney has two options:  1)  he may respond with technical and legal arguments explaining why the Examiner is wrong, or 2)  he may amend the claim to distinguish over the features described in the prior art.

However, as a matter of law, your attorney may not add "New Matter" to a patent after it has been filed.  Your attorney may only amend a claim by adding a feature that has already been described somewhere in your application.  And this is where the skill and diligence of a patent attorney can become visible to the average client.

On the day the application is filed, neither the inventor nor the attorney knows what the "invention" is.  The "invention" (the claims that are allowed) are discovered in the prosecution process as the Examiner rejects the claims, and the attorney amends the claims, or argues for their allowance.

More to the point, no one knows what fact or detail in the detailed description will be necessary to successfully amend a claim.  Because of this, the detailed description should be exactly that . . . detailed!

It is usually not difficult to get a patent.  A patent attorney will almost always be able to find some trivial feature in the detailed description that distinguishes over the "prior art."  However, it is not simply a question of getting a claim allowed.  It is a question of getting a valuable claim allowed.  If a claim is amended by some trivial feature which is not essential to the inventive concept, another engineer or inventor will easily be able to circumvent your claim by building a functional device that borrows from your inventive concept while avoiding the trivial feature of your claim.  If they do not infringe every element of a claim, they are not infringing!

When a detailed description is not detailed, your attorney will have far fewer options with which to amend your claims.  The only available elements for amending an important claim may be trivial, non-essential features, thereby rendering your patent worthless.  And you should not be thinking "rocket science" here.  A simple bend in a piece of tubing may be all that is needed to successfully amend a claim to secure allowance of a commercially valuable patent.

When an attorney simply "turns the crank," and writes down exactly what you tell him, he is more likely to produce a patent application that is essentially worthless.  Your attorney should provide great detail, and if necessary, ask you for many specific details that you have taken for granted.

For a claim to be valuable, it must be amended with some feature that remains critical to the fundamental function of the invention, without which, it will be difficult or impossible to design around.  But if a detailed description does not include that critical feature, the claims may not be amended to include that critical feature.

Ask your attorney for some samples of simple patents that he has drafted.  Ask him if he can also provide you with patents in the same field drafted by other firms or attorneys.  Compare them.  A carefully written patent will have a detailed description that is truly detailed, and that is clear and easy to read.

First, you must select an attorney, and he must agree to take your case.  An honest attorney will often advise a client that their idea is not patentable, or if it is patentable, it may not be economically viable.  That is, it may cost more to secure the patent than the inventor is ever likely to make back.

If you agree to go forward, the California Rules of Professional Responsibility require that a Professional Services Agreement (a contract) be finalized before work is begun.

You should prepare a written invention disclosure of your idea, with drawings and about one or two pages of details.  An attorney's time is expensive, and the more "leg work" you do, and the sooner you do it, the less expensive your patent will be.  Attorneys have to continually "fill in the blanks" in their detailed description.  For example, your attorney may write that "A is connected to B by an insulating epoxy."  Upon reading hit, you advise him that it is a conductive connection.  The amount of re-writing to correct this may be three words, or half the patent!  Make sure your attorney understands your patent before he starts work.  A well written invention disclosure and a face to face meeting complement each other well, and can save you a great deal of money.

No!  There is no such thing as an international patent.  There is such a thing as an international patent application, but this is not the same thing as an international patent.

It can cost thousands of dollars to translate a patent and file it in a foreign country.  It also costs money to hirer a lawyer in each country to prosecute your application before their national Patent Office.  Moreover, at the time of filing, an inventor may not even know which countries are the most economically strategic for securing patent rights.  Finally, when prosecution begins in the United States, he may realized that someone filed the same invention about a month before he file, and that it is economically pointless to pay a lawyer to continue prosecuting the application.  He he were to learn this after he had spent $50,000 to file in countries all over the world, it would be an expensive mistake.

To ease the financial burden on inventors, and give them time to determine in which countries they would like to seek patent protection, the Paris Convention and the Patent Cooperation Treaty (PCT) have developed a process whereby an inventor may initially file a single PCT application with the World Intellectual Property Organization (WIPO).  This will postpone the incursion of fees for filing an individual countries up to thirty months after the earliest priority date.  Before the thirty months have expired, however, the applicant must identify specific countries in which to seek patent protection, and must convert the international application to a series of national applications in those selected countries.

With the advent of the European Union, an applicant no longer needs to file in every member state of Europe at the thirty month point.  They simply file a single European patent application, and need only one European attorney to prosecute that application before the European Union.  Once allowance is secured in the European Union, the applicant must still convert the issued patent to national applications in individual member states.  This will require a fee for each member state, and, if the member state is not an English speaking country, translation fees will be required.  But an inventor no longer needs to endure costly attorney fees in every European nation to secure patent rights in that nation.