Michael J. Foycik Jr., Esq.

Is there a good way to tell when you have the wrong patent attorney?  There are factors worth considering. 

Does your patent attorney not seem to listen?  Or, not seem to care about your objections and concerns?  Does your patent attorney make themselves available to answer questions?  These are red flags, especially if things are not going well otherwise.

Does the patent attorney's first draft make sense for your invention?  Most inventors rightfully expect to see writing that is as good as or better than their own.  Do you have to explain things several times?  Are you uncomfortable with how the claims sound?  These too can be red flags, when other things are not going well either.

Has your patent attorney filed continuation after continuation without making progress?  Or, have they filed RCE (“Request for Continuing Examination”) after RCE without making progress?  Or, have they filed about Appeal after Appeal, without success?  These could be red flags too.

This is not to say “good” or “bad” - rather it is to say “right skills for the right job.”  Even a very good and reputable patent attorney may sometimes find themselves out of their element, and look bad as a result.  That shouldn't matter though – good results should matter.  A different attorney, better suited for a particular effort, may well get different results. 

While the above-noted issues can be bad signs, they might not tell the whole story.  Even though the above situations exist, can that patent attorney really still be the “right” one  for that job?  Possibly so – if it is just a case of simple bad luck, pursuit of a weak invention, sure.  Or, it could be part of a strategy to maintain patent pending status for strategic reasons despite a weak invention. 

One of the biggest problems in the patent field is that the law of chemical patent claim practice is completely different from the law of mechanical/electrical patent claim practice.  Claim drafting can be drastically different, in my experience. 

Good chemical practice in a particular case might well mean reciting the functions of the chemical product in detail.  Good electrical practice might mean reciting all of the structures involved, the way the structures are connected, and what each structure does. 

If your patent attorney is primarily skilled in the chemical arts, they might not have the legal skills needed for your software invention, business method, or electrical circuit.  The flip side is that your electrically skilled patent attorney might well be ineffective in trying to obtain a patent for a novel drug or catalyst.  Make sure your patent attorney is qualified for the technological area involved. 

This is not legal advice – for that you'd need to consult a registered U.S. Patent Attorney and discuss the specifics involved.