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:
  1. Do all your lawyers have technical backgrounds? In what fields?
  2. Has your firm worked with companies like ours?
  3. Have any of your patent lawyers ever worked in the U.S. Patent and Trademark Office as Patent Examiners?
  4. "How many patents does your firm write annually, on average?"
  5. What is your approximate success rate?
  6. "Typically, what is the overall price to file and prosecute a patent application?"
  7. "How many foreign patents does your firm handle annually, on average? Have you ever worked in the following countries: _______?"
  8. Are there any economic systems for foreign patent filings? Which do you use?
  9. Have any of your patent lawyers taught patent courses? Have any written journal or magazine articles on patent law?
  10. 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:
  1. How many trademark specialists do you have? Where and how did they get their expertise?
  2. Have any of your trademark lawyers ever published articles or taught classes about trademarks? How many years did they teach?
  3. "On average, how many trademark availability searches does your firm conduct each year? Which databases do you use for searching? What are your charges?"
  4. "On average, how many U.S. ""trademark"" applications does your firm file each year?"
  5. What is your approximate success rate?
  6. "Typically, what is the overall price to file and prosecute a U.S. trademark application?"
  7. "On average, how many foreign ""trademark"" applications does your firm file each year?"
  8. "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?"
  9. How many companies does your firm do the trademark work for?
  10. What experience does your firm have in trademark litigation?