How to Choose a Qualified Counsel to Handle Your Client's Patent and Trademark
Patents
Usually, clients will seek their general counsel's advice in selecting a new patent lawyer. Here are several questions you should ask when evaluating a firm specializing in patent law:
- Do all your lawyers have technical backgrounds? In what fields?
- Has your firm worked with companies like ours?
- Have any of your patent lawyers ever worked in the U.S. Patent and Trademark Office as Patent Examiners?
- "How many patents does your firm write annually, on average?"
- What is your approximate success rate?
- "Typically, what is the overall price to file and prosecute a patent application?"
- "How many foreign patents does your firm handle annually, on average? Have you ever worked in the following countries: _______?"
- Are there any economic systems for foreign patent filings? Which do you use?
- Have any of your patent lawyers taught patent courses? Have any written journal or magazine articles on patent law?
- What experience does your firm have in domestic patent litigation? What about foreign patent litigation?
Trademarks
To determine a firm's level of expertise, one could ask:
- How many trademark specialists do you have? Where and how did they get their expertise?
- Have any of your trademark lawyers ever published articles or taught classes about trademarks? How many years did they teach?
- "On average, how many trademark availability searches does your firm conduct each year? Which databases do you use for searching? What are your charges?"
- "On average, how many U.S. ""trademark"" applications does your firm file each year?"
- What is your approximate success rate?
- "Typically, what is the overall price to file and prosecute a U.S. trademark application?"
- "On average, how many foreign ""trademark"" applications does your firm file each year?"
- "Does your firm use supervised paralegals to help keep costs down? How many years ""trademark"" experience do the paralegals have? Are they supervised by partners who are trademark specialists?"
- How many companies does your firm do the trademark work for?
- What experience does your firm have in trademark litigation?