There are many intellectual property (IP) firms in the UK and thousands of registered patent attorneys. Traditionally, location has been close to the top of any list of criteria for choosing, but since the COVID-19 pandemic has forced most of us to work from home and meet remotely for well over a year, it is no longer a critical factor. So how do you go about choosing the right patent attorney for your business? Here are our top five tips….
1. Technical Background & Expertise
This has to be one of the main factors in choosing the right patent attorney for your business. A patent attorney enters the profession with a science degree in one of the STEM subjects, and usually specialises in the law and practice particular to fields within that subject. The majority of registered UK patent attorneys can handle ‘simple’ mechanical inventions. However, a patent attorney with a biochemistry background will not usually be a good fit for a technology-based company. Equally, an attorney specialising in electronics is unlikely to be ideal for a pharmaceutical company. So you can start by looking for an attorney that specialises in a technical field closely related to the field in which your business operates.
The IP Regulatory Board (IPReg) maintains a register of UK attorneys, and you find that here https://ipreg.org.uk/registers. Similarly, the Euoprean Patent Office maintains a list of European Patent Attorneys across all EPC states here: https://www.epo.org/applying/online-services/representatives.html.
For example, at Strachan IP, our CEO, Vicki Strachan, has a First Class degree in Electrical & Electronic Engineering and specialises in digital and data communications, telecommunications, software and computer-implemented inventions (including web-based and mobile apps, artificial intelligence (AI) and deep machine learning, virtual and augmented reality technologies, digital asset management, cryptocurrency and blockchain technologies, audio and sound applications; electromagnetic waves and applications (including microwaves), optoelectronics, semiconductors and integrated circuit technologies, and microfluidics. She also has extensive experience in some mechanical engineering sectors and consumer goods.
That said, if you need someone with a different technical background, please feel free to contact us, and we will try and recommend someone suitable, if we cannot help.
Once you have narrowed down your choices based on technical expertise, you can move on to the next four tips to help in choosing the right patent attorney for your business.
2. First Impressions
Most IP firms, including Strachan IP, offer an initial consultation free of charge. You could set up two or three (or more) initial meetings and compare your first impressions. This initial meeting is your opportunity to speak to a patent attorney and get a ‘feel’ for how you will get on with them and their firm. Some questions to consider, include, Will they, personally, be doing all of your work and managing the relationship with you? Or will some/all of the work be delegated to others? Do they ask questions about your business and what you hope to achieve? Do they take the time to really understand the needs of your business and how they can add value? Or is the meeting strictly time limited and rather transactional in nature (process, timelines, fee schedule, etc)? Do you get on well with, and trust, them?
The patent process takes place over a number of years and you will need to communicate with your patent attorney on a regular basis during that time, so it helps if the relationship and trust are built at an early stage. Can they help with other types of IP applicable to your business, such as copyright, database rights, trade secrets, know-how, etc). What about IP-related contracts such as assignments, licences and non-disclosure agreements (NDAs)? What is your impression of the culture of the firm – what are your first impressions from their website? Do they ‘fit’ with the culture and values of your own business?
3. Cost
I hesitate to include this section, because cost isn’t everything, and, in fact, it is rarely cost effective to use a firm that comes in ‘cheapest’ with their quote or estimate for preparing and filing a patent application for you. You might expect a larger firm to be more expensive as their overheads are higher but, equally, they can leverage teams of paralegals and trainees for some aspects of the work, which would attract lower hourly rates. In general, smaller firms tend to offer a more personalised service, with an experienced attorney managing most, if not all, aspects of your work, but the hourly rate of that attorney is often lower than a comparable attorney at a larger firm. This can result in a more predictable and transparent fee structure.
All of that said, no two firms (large or small) are the same, and these are all matters that can be explored during the initial consultation.
4. Understandability
I nearly made this heading ‘Transparency’, but what is really important is that you can understand what the attorney is telling you, and that they take the time to explain complex matters, and how they might impact your business, carefully, so that you can make informed choices that match your commercial goals. This only works if the attorney has taken the time to get to know you and your business, your challenges and aspirations, so that decisions about your IP can be aligned accordingly.
5. Value Added?
Does the initial meeting add to your knowledge and understanding of the patent process and its applicability to your business? Were any other relevant IP rights identified and discussed? Can the attorney provide regular updates and/or schedules of upcoming deadlines or events including estimates of costs? These and other value added services can help to give you confidence in your choice of attorney.
If you need help or advice on this, or any, IP matter, please contact us via our website: https://strachanip.co.uk/ , or by email: info@strachanip.co.uk or telephone +44(0)7714 797135
