As a tech SME, you need to know how to choose a patent attorney – it’s a big decision. Get it right and you’ll have an easier life and get solid protection that will add value to your business. Get it wrong and you’ll give yourself a big headache and increase the chances that you’ll spend a fortune on patents that will let you down when you need them.
So, how to choose?
Don’t do this!
Let’s start with what you should NOT do!
DO NOT pick a patent firm simply because it has a well-known brand and is what you might call ‘a big firm’. I’m not saying you shouldn’t use those firms (although I think in most cases their not a good fit for SMEs), just don’t choose a firm for those reasons.
[In fact, don’t choose a firm at all. Choose an attorney – more on that below.]
To my mind, there is zero advantage – and I mean literally zero advantage – in having your patent work done by a large patent firm if you’re a start-up or an SME.
There are, however, possible disadvantages – here’s a few I think can occur.
- You don’t get your work done by a senior partner, even though you might have had a senior partner selling it to you
- You spend more time deciphering communications because you’ll be contacted by firm machinery rather than your attorney, much of the time with confusing standardised letters
- You pay more
Naval Ravikant talks in his blog and podcast about the principal-agent problem and is explicit about the fact that he deals with “the smallest firms possible.” He even says “when I hire a lawyer … I’ve become very cognizant about the size of the firm. Bigger firms—all other things being equal—are generally worse than small ones.”
I don’t hide the fact that I agree with him. Many of the issues I mention above are solved by getting the right patent attorney in a small firm.
There is an old (and frankly rubbish) adage that “nobody ever got fired for hiring IBM” to justify picking a big provider.
I have a better adage: “The corner shop doesn’t get Deloitte to do its tax returns.”
There’s a reason for this. Deloitte is simply not setup to service small businesses. It offers a service to large corporates. It’s a completely different service to what a small business needs. And it’s expensive.
In my opinion, the same is true of larger patent attorney firms although they don’t often understand that themselves.
If you’re looking for the right patent attorney, speak to Steve
Choose an attorney, not a firm
Instead of choosing a firm, choose an attorney. This will take some extra effort on your part, but believe me, it’s worth it. As I said up top, getting this decision wrong will cost you a lot more time and money and risk not getting good results.
The trouble is, how do you choose an attorney?
What it comes down to is trust. You need to have confidence (i.e. to trust) that one attorney out of the many on offer can provide the advice you need, the service you need and do it at the right price.
Well, the good news is that there’s an equation for trust…
In fact, there are a few variants of this equation, which was originally suggested (I think) in the Trusted Advisor. This is one version that I like. What it really says that, in order to trust someone, you must know them well, they must be technically credible, and the risk to you in trusting them cannot be too great.
You can use this to select your patent attorney. To select any advisor actually.
Let’s break it down.
Essentially, how well do you know this person?
Intimacy covers a whole range of things, some of which you might not always think you’d want to know about someone before you start working with them.
- What are their values?
- What is their approach to relationships?
- Are they kind?
- Are they ruthless?
- Are they ambitious?
- What books do they read?
- What do they do in their free time?
There are no rights or wrongs with this. Some people might want a ruthless patent attorney that wants to take over the world. Some people might want a kind and open minded patent attorney. It’s really up to you, but you can’t fully trust someone until you know them.
How do you get to know them?
Start by checking out what content they put online. If you see content from an attorney that is talking about the issues you face and saying things that align with your values and way of thinking then that’s a good sign.
Also, ask around for a recommendation. These can be an effective short cut to trust because someone you know and trust already is vouching for an attorney. This is why all service providers prize referrals as a mechanism for winning new business. When asking around, try to ask people with businesses that are like yours: same broad technology area, same size, same commercial/exit strategy.
Then have at least a couple of calls with them where you can find out a bit about what makes them tick.
You’ll quickly learn whether you like them or not and, believe me, it’s really important that you do.
This is about the attorneys technical capability. Are they experienced and competent enough to do the work you want them to do.
With patent attorneys (in the UK and large European economies, at least), you’re at an advantage when it comes to credibility because you can take legal competency to be a given. Well, pretty much. We have a well-regulated profession that requires patent attorneys to pass tough exams in order to demonstrate their ability to practise. Sure, there will be legally excellent attorneys and legally okay attorneys, but if they’ve passed the exams and been doing the job for a while then you can broadly expect them to know the law.
So when you’re an SME hiring a patent attorney you really need to focus on their commercial credibility.
- Do they publish content online or elsewhere that speaks about solving the commercial issues you face?
- Do they know how business works?
- Do they understand how patents and other IP maps onto a business?
- Have they helped other businesses get the right commercial results from their IP?
- Have they spent time as an in-house patent attorney at a company?
Before you hire them, make sure you speak to them and ask questions so you can understand these things. As SMEs, you probably won’t have any specialist patent or IP expertise in-house and so you need a patent attorney who can, and is prepared to, get close to your business.
When you find someone you like, start small with them. Get them working on a meaningful but small project so you can see how they work. Maybe ask them to draft a patent application. Maybe ask them to review your strategy. Or you could ask them to give a high level view on a good IP strategy for you.
Minimising the risk in this way will make it easier for you to place your trust in them. If things go well then you can extend the work further.
Of course, the risk you feel will also be related to the cost to you, how well you know them and how credible they are. If those elements are strong then you might be happier starting with a bigger project.
Use the equation
So that’s how to get the right patent attorney. Work through the equation and satisfy yourself on all three elements. And whatever you do, don’t just pick a firm you know or use the Yellow Pages.