No two Patent Consultants are the same, and depending on their background, experience, scope of service, and clientele, each consultant’s relevance to your needs can vary greatly. Given these considerations, it is important to find the right consultant for your patent portfolio. The following questions serve as a general guide for selecting the right Patent Consultant for your needs.

“What services do you provide?”

The first step in choosing the right Patent Consultant for your invention is identifying whether the consultant offers the right services. There are many types of patent professionals, including Patent Agents, Patent Attorneys, and Patent Brokers. Whether you need the services of one, two, or all of these patent professionals depends on which stage your idea or invention is in, and what you intend to do with it. 

Patent Agent: A Patent Agent is licensed by the USPTO, but that licensing is limited in several ways. A Patent Agent’s primary role is assisting and advising inventors with a variety of tasks, such as completing and submitting patent application paperwork, performing patent searches, and drafting opinions regarding the patentability of an invention or process. However, a Patent Agent is not licensed to practice law or represent clients before the USPTO, and a Patent Agent may not be well suited to advise on the value or marketability of a patent, nor should one be used to broker a portfolio sale.

Patent Attorney: If in need of legal advice, a Patent Attorney offers the appropriate services. Patent Attorneys differ from other attorneys due to their educational background, and the additional requirement that they pass the Federal Patent Bar exam, (also required for Patent Agents). A Patent Attorney differs from a Patent Agent because they specialize in providing legal advice and opinions on patentability, preparing and filing patent applications, and representing clients in patent litigation.

Patent Broker: Finally, a Patent Broker primarily specializes in the valuation and marketability of patents and patent portfolios, as well as brokering sales, licenses, and purchases between patent holders and buyers. Patent Brokers also provide patent marketing services, patent advice and informative research regarding potential infringement, as well as advise on the patentability of an invention. 

“What is your background/experience/expertise?” 

Regardless of which service you require, knowledge of the consultant’s background is essential to making an informed decision. Important questions to ask all Patent Consultants include:

·         What technological fields do you have experience with?

·         What is your educational background?

·         Do you possess any certifications, advanced training, or expertise in a particular area?

·         Before becoming a Patent Consultant, were you employed in a related field?

·         What experience do you have with client’s with similar project needs?

These questions are relevant when meeting with any Patent Consultant.

Important questions specific to a Patent Attorney may include:

·         Are you licensed to appear before the USPTO?

·         How many patent applications do you file annually?

·         Have you ever been subject to discipline from the USPTO or state bar association?

·         What is your success rate in patent litigation?

For a Patent Broker, it is important to ascertain their experience as well as their knowledge and abilities. Important questions include:

·         How many transactions have you facilitated?

·         How many portfolios do you sell each year?

·         Do you work primarily with buyers, sellers, or both?

·         What is your experience/process for evaluating the value of a patent portfolio?

·         Do you have standing relationships with potential patent portfolio buyers and sellers?

·         What is your strategy for marketing patents?

·         How long does it usually take to sell a patent or portfolio? 

If, for example, your patent involves complicated technological schematics, it is axiomatic that an Agent, Broker, or Patent Attorney possess the ability to interpret and understand what your patent does and how it works. Failure to do so could negatively affect the value and patentability of the patent. For example, a Patent Attorney who specializes in mechanical inventions would be of little value for an inventor with a patent for 5G technology, because an Attorney who lacks understanding of the next generation telecommunications protocol would be far less suited to craft patent claims and navigate patent prosecution at the USPTO, which could result in the invention not being allowed as a patent. However, an Attorney with superior knowledge of communications technology may prevent pitfalls and successful argue around objections from a USPTO examiner.

Likewise, a Patent Broker lacking technical knowledge may seriously undervalue a patent portfolio in a sales negotiation. In contrast, a Patent Broker who understands the intricacies of your patent or idea can help maximize the return on your investment by accurately valuing the patent, understanding potential infringement, and leveraging that knowledge during a sales or licensing negotiation.

“What will it be like working with you?”

Whether you’re working with a Patent Agent, Patent Attorney, or Patent Broker, you will be working closely with your consultant throughout the process of obtaining your patent, resolving litigation, or transacting your patent portfolio. As such, you must be able to maintain a functional and professional relationship. Important considerations include whether you would be more comfortable working with a boutique brokerage or law firm, as opposed to a larger, corporate entity. Ask questions like:

·         Will there be a team of people working on my account, or will it be the primary responsibility of a single person?

·         How often do you meet with clients?

·         What is your preferred method of communication?

·         Do you envision any obstacles or problems in the scope of our business dealings?

“How much does it cost to utilize your services?”

Cost is a necessary component that should be ascertained before engaging the services of any Patent Consultant. Depending on the nature of your representation, costs and fees can vary greatly among different consultants. Thus, it is important to pick a Patent Consultant who is transparent about their billing policy and can give you an upfront estimate of the costs you can expect to incur.

In addition, fee structures can differ depending on the type of consultant. Patent Agents often provide their services for a flat fee, while Patent Attorneys typically charge a set amount per hour spent working on a case. Patent Broker fees can vary depending on the type of work being performed; for example, most Patent Brokers will command a percentage of the sale of a patent portfolio, though some will charge a flat fee. (Beware of flat fees in this context, as it can indicate a lack of confidence in the marketability of the portfolio).

“Would you provide a list of references that you have worked with in the past?”

References reveal a lot about what it is like to work with a Patent Consultant. Were they were transparent? Professional? Competent? Would their references work with them again in the future? Not only are references valuable for what you learn speaking with former clients, but a Patent Consultant’s willingness or reluctance to provide references may also speak greater volumes about what it is like to work with that individual.

Conclusion

While this is not an exhaustive list of questions which may be relevant for you to ask before hiring a Patent Consultant, the answers to these questions will provide a solid basis from which subsequent questions, considerations, or a decision can be based. Ultimately, the quality of the Consultant and their services will become apparent through these inquiries, and will illuminate if the person you choose not only has the necessary skills and knowledge for your needs, but is also someone you can get along with, respect, and trust. 

The core team of patent consultants at Vitek IP, LLC have analyzed over 20,000 patents, while managing hundreds of buy-side and sell-side transactions for some of the world’s largest companies. Vitek’s founders have over five decades of experience in IP and tech, and have developed sophisticated patent sales and patent acquisitions strategies for some of the world’s largest companies. Vitek’s patent consultancy, brokerage group, and research organization provide clients exceptional guidance navigating the patent landscape. For more information, visit www.vitek-ip.com