At the recent IPAA Seminar for entrepeneurs, various issues of interest to inventors and small companies were discussed by professionals in the field, including data searchers, patent attorneys and examiners.
The key issue of choosing a patent attorney was not discussed with the audience. This was a conscious decision of the organization to avoid controversy.
I think the issue is important and I’ve tried to generalize the various considerations below. The issue has similarities to choosing a doctor, a Rabbi, an accountant of a dentist.
Patent Attorneys come in all shapes and sizes. Instead of a theoretical optimum, inventors and companies would do better to choose the right attorney and the right solution for them.
Issues to address are:
- Does one need an in-house attorney or an external service provider or both?
- Does one need a technology specialist of a generalist?
- How much experience should the attorney have?
- Does one need an Israeli? An English speaker? A russian speaker? Something else?
- Should the Patent Attorney be an attorney-at-law as well, or maybe an Attorney at law who is not qualified in patents?
Specialists and Generalists
Some patent attorneys are specialists in specific technology areas whereas others can happily work in a wide variety of fields. It is probably as much a reflection of the character of the practitioner and both have their uses. It is certainly important that the attorney drafting a case understands the technology when he comes to write it, and the client will not want to spend a lot of money educating the attorney about their field, but many attorneys can work effectively well beyond their specific field of education.
Knowledge and Experience
What is important is the practitioner’s general experience, his / her competence in writing in English and his scientific and legal knowledge. He / she should certainly be licensed in the country where he practices. I think that English at mother tongue level is necessary to write patent applications. Clearly Hebrew is important for discussing with inventors, and sometimes Russian is useful as well. In general, additional languages can help with prosecution where prior art may not be in English. Experience working in industry, even as an engineer, prior to becoming a patent attorney also brings added value.
There is also a law of diminishing returns, in that the difference between someone newly qualified and someone with 5 years experience, is generally less significant than the difference between someone with 5 years experience and someone with 10 years experience. If they have 15 years or 20 years, does it make a difference? Yes, but other considerations may outweigh the experience issue. Someone with two master’s degrees each a double honours in different life sciences disciplines will probably have a more rounded scientific understanding, at least in life sciences than someone who went from a first degree to a PhD, but in general, the higher the qualification the better.
As time goes by, starting qualifications are generally higher, and so it is common for a less experienced patent attorney to have a PhD and for the old times to have first degrees only. With drafting applications in state of the art technologies, a higher scientific background is probably more valuable, whereas for prosecution, experience generally counts for more. Having a relatively less experienced professional draft the application and then a more experienced attorney review, edit, critique and draft claims may be a good way to get a quality product, but only if the more experienced attorney really works on the application and understands the technology, what he/she is doing. Another pair of professional eyes will invariably find something missed, even if it is only a typo or a paragraph.
The Patent Attorney is required to be a pedant, who chooses his terminology very carefully to avoid ambiguity and who follows the laws of spelling and grammar. The numbers in the Figures are required to match the numbering in the text. However, the attorney is preferably creative, bringing added value to application he drafts but widening beyond the inventor’s current level of development and finding or creating solutions to complex legal problems. The character traits for the pendant and the creative person are different, but the good patent attorney is both.
As in every field, two-thirds of practitioners are within a standard distribution of the average ability. All these are competent practitioners. Furthermore, the entry requirements are high. There are a small number of very good practitioners, often specializing in ver specific technological or legal niches. inevitably there is also a small number of those who chose the wrong profession and are just simply less competent. Sometimes these practice for many years indicating that some clients are less than discerning.
A Long term relationship requires compatibility
Established companies need a long-term relationship with their patent attorney. This is true for start-ups that survive as well. One should choose someone who one can get on with. Indeed, a major cause of companies moving their portfolio from one attorney to another is that there is a new CEO, in-house manager or Head of R&D who has successfully worked with some other attorney in the past and prefers to work with him or her.
Israel Patent Attorneys come in a wide variety of shapes and sizes, ages, levels of education, levels of religiosity, political leanings and just about every other way of sectioning the population. Some are Israel born, many are Western immigrants. There are a higher percentage of religious attorneys among those that came from English-speaking countries, probably because they immigrated to get to Israel rather than to escape from elsewhere. Many, perhaps most practitioners are honest. Some are not. I’d like to be able to say that those that wear skull-caps and excuse themselves from meetings to pray are always honest in their business dealings, but sadly this is not the case. As your relationship with your attorney is likely to be a long one and you may wish to take out your frustrations for a wrong strategy or for the Examiner’s stubbornness with the attorney, you should choose a practitioner that you think you will be able to get along with and trust since your relationship may last years if not decades, and since changing attorneys in the middle of a project always creates upset, rarely makes cash savings and often causes mishaps. problems.
Ignore tables comparing firms and concentrate on the individuals providing the service
I have concentrated on attorneys not firms.
Dunn and Bradstreet publishes league tables of leading Israel IP firms. Their sole category for comparison is number of attorneys. In other words, the more attorneys not only the bigger the firm which is obvious, but the better the perception of the firm.
Trade magazines also sometimes publish league tables. However, being based on numbers of respondents, tend to favor the larger firms, since by having more professional service providers, they typically can and do serve more clients.
Some practitioners prefer to operate in small firms or by themselves. Every year one or two senior partners in large firms leave and set off by themselves. Such attorneys were no better when working for the large firm than when working individually. Their clients typically go with them. Furthermore small firms and sole practitioners tend to have lower over-heads than larger firms and can’t be seen to be more expensive and so are generally a little cheaper, this despite the attorney probably taking home more money at the end of the month.
In big firms, the main contact person may be the person who writes the applications or the main overseer. The person who does the actual work may be the person who knows what the client wants and needs. This is not necessarily the case however.
Having a relationship with the partner sales person or rain maker is not the same as having a relationship with the person who does the work. Now here’s the funny thing. The difference between costs of a similar service between a small firm and a large firm is less than the difference in overheads apportioned to the file. In other words, the attorney doing the work is likely to earn more in a small firm than in a large firm. This probably explains why the general flux is from large to small firms, with attorneys who feel they have enough experience to start out on their own who are not made partners, tending to set up by themselves; their clients going with them.
Entrepeneurs collecting the sales literature of the various firms will be astounded by how many bill themselves as being the leading Israel Patent Attorney Firm.This is not the time nor place to look into those claims, however clearly they are not all correct. Sales literature should be reviewed carefully and with appropriate cynicism.
Costs – cutting out the local practitioner and engaging a US patent firm, after all, they US is where we want a patent
I recently compared the combined costs that Israel inventors and companies pay for working with a local agent who drafts the application and prepares more or less detailed instructions for a US agent to convert into an official response, and often prepares a draft response fully formulated with the IAPLA’s published statistics for drafting and prosecuting patent applications in the US of different levels of complexity and in different technologies. What is clear is that even when combining my fees with those of the associates I use, my clients are paying below the average for having a US firm draft and prosecute. I think this may well be true of the industry as a whole since Israel salaries are lower than those of similarly qualified US attorneys. I suspect that clients working with local professionals get a much better service as they have a local attorney on call to meet with their engineers and that local attorney can speak Hebrew and English. Local practitioners should have esential knowledge on Israel tax law, the law on security related inventions, Israel employment law and other issues that impact local entrepeneurs that one can assume their foreign counterparts won’t know.
Outsourcing and Off-Shoring
From various blogs, chat groups and the like, it seems that having applications drafted in Europe is generally cheaper than in the US. Nevertheless having a US attorney drafting US specific claims may be a good idea. Whereas the UK and Germany are clearly NOT the cheapest places to have work done, they still get the lion’s share of the prosecution in Europe from foreign firms. Some European patent attorneys were grand-fathered in to the system when their countries joined the EPO. There are, however, several good Irish, Italian, French and Dutch firms that may be worth obtaining quotes from.
There are websites offering super-cheap patent solutions. Like websites offering bargains in other areas, one is advised to be extremely careful.
There are, of course, super cheap options, such as the non-licensed practitioner. In his recent book, Dr Kfir Luzzatto notes that there are no free lunches in IP. This is not strictly true, as I will certainly take a promising potential client out to lunch, and associates visiting Israel come to me on pilgrimage and sometimes treat me. The Friedman plagiarized metaphor may be wrong, but there is a basic truth that where there are major differences in price, there is usually a reason.
The arrorney should be available. The patenting field is generally expensive and good practitioners are generally not overly hungry for work. Nevertheless, the chosen attorney should be affordable. That doesn’t mean cheap, but if you can’t pay his/her fees, go elsewhere or don’t file patent applications.
Get a sample
It is worth asking to see some applications or issued patents drafted by the attorney for a similar invention. This will give a very good indication of what the end product will look like. It is also worth asking for recommendations. If the attorneys clients won’t vouch for him / her or if he/she is reticent about mentioning who they work for, which is generally a matter of public record anyway, as it appears on the front page of PCT applications, one can legitimately wonder why.