Here are some things to consider in the selection of a patent attorney.

1. The Working Relationship

The patenting process is often lengthy: 2-3 years is not unusual. It is a process that absolutely needs the involvement of the client; please keep in mind that you will need to educate the attorney about your idea i.e. you are the expert when it comes to the idea. However, the patent practice is a niche practice and it should be clearly defined that the patent attorney is there to assist in the prosecution of the patent application and possibly other related matters such as licensing agreeements but not all business matters.

2. Technical Competence

Before a person can take the Patent Bar the individual must demonstrate that he or she possesses the requisite undergraduate degree. This degree must consist of a math or science related background. Examples of degrees that qualify include engineering degrees, science degrees (chemistry, physics etc.) and mathematics. However, even though I possess an engineering degree there are certain types of patent applications that I would not attempt to prosecute such as a complex chemical application simply because I feel that I do not possess the required technical background to prosecute the application.

3. An Understanding of the Fees/Costs

The Patent and Trademark Office (PTO) has a myriad of costs that can involve a significant amount of money; you will incur certain costs and those should be discussed in addition to the fees to be charged by the attorney. Before retaining a patent attorney you should discuss the fees and costs that are likely to be encountered during the patenting process.