I n n o v a t i o n | P a r t n e r s

P E O P L E

Guidelines for Selecting Your Patent Attorney

When you select a patent attorney, you should look for the following qualities:

  1. A strong technical background. A strong technical background will allow your patent attorney to learn the invention quickly. This will save the inventor from having to explain basic details, and will also save the engineer from having to spend significant amounts of time correcting the first draft the patent attorney prepares. The stronger the technical background, the less time the inventor will have to spend on the patent process. Furthermore, it is only when the patent attorney fully understands the invention that the patent attorney will be able to describe the invention in a manner that will fully stand up in court. More importantly, your competitor's attorneys will recognize the weakness of your patent attorney's technical background in advance of any trial, and will resist your attempts to enforce your patent on this basis.
  2. An ability to learn quickly and communicate clearly . A good patent attorney is unlikely to have the specialized knowledge of the inventor, but if your patent attorney learns quickly, the inventor won't have to reexplain things to the attorney, saving the inventor's time. Your patent attorney will need to be able to communicate clearly to allow your patent to be understandable to both an engineer, and any member of a jury. Juries are composed of non-engineers, so the ability to communicate to both engineers and non engineers can make the difference between an enforceable patent and one that gets thrown out in court or at the patent office.
  3. A strong grasp of patent law. A good patent attorney can use all of the patent laws to protect your invention most completely. An attorney from a top law school, and one who has been practicing for many years will have the knowledge and experience to protect your intellectual property to the fullest extent of the law. This knowledge and experience can not only allow the patent attorney to know the maximum protection that can be granted by the patent office, it can also allow your patent attorney make the decisions that can prevent your patent from being declared invalid by a court, even after the patent has been granted.
  4. Business sense and corporate experience. Patents are ultimately a business tool, and your patent attorney can draft the patent in a manner that makes sense for your business only if he or she understands the business world. Furthermore, a patent attorney with significant corporate experience can balance the needs of the business with those of the patent to ensure that the patent process doesn't so engulf an inventor's time that the inventor has no time to create products or services that the business can sell.

Your goal in selecting a patent attorney is to find one attorney with all of the above qualities to draft all of your patents. And you'll want to make sure that the attorney you find will be drafting the patents himself, not sending them to a junior attorney who has few, if any of these qualities. Many law firms will show you the most impressive attorney they can find, only to shift the work down to more junior attorneys. The qualifications of the person who architects the patent design and argues the patent before the patent office is the single biggest factor in getting a broad, defensible patent allowed by the patent office. Many law firms leave these jobs to someone other than the person you'll meet. You should make certain that you understand the qualifications of everyone who will be working on your patent applications.

 

THE PEOPLE OF INNOVATION PARTNERS

At Innovation Partners, everyone who architects patent applications and argues them before the United States Patent and Trademark Office has an undergraduate engineering degree from Stanford, Berkeley or MIT, has demonstrated the ability to learn quickly and communicate clearly by teaching engineering to others, has a law degree from a law school recognized as being in the "top ten" law schools, has many years of experience practicing patent law, as well as corporate engineering or business experience.

CHARLES GOTLIEB

Charles Gotlieb founded Innovation Partners, a Palo Alto and San Francisco, California law firm specializing in technology issues. Mr. Gotlieb specializes in intellectual property counseling, technology licensing and distribution, and patent prosecution. He is a registered patent attorney and his articles on intellectual property law have been published in various publications. At Stanford University, Mr. Gotlieb simultaneously received two undergraduate degrees in Electrical Engineering and in Industrial Engineering and Engineering Management, and was admitted to Stanford's engineering honor society, Tau Beta Pi. After graduating from Stanford, Mr. Gotlieb served as an adjunct professor of Electrical Engineering at Stanford University, and was employed by International Business Machines Corporation and ROLM, an IBM-acquired communications equipment corporation, in various assignments in manufacturing, product management and sales. Mr. Gotlieb received his law degree from the University of California at Berkeley, Boalt Hall School of Law, where he held a number of editorships at the High Technology Law Journal. Mr. Gotlieb has technical expertise in a wide variety of software including database software, encryption, Web technologies and communications, hardware, including circuit design, industrial processes and technologies, and bioinformatics.

Mr. Gotlieb has represented corporations as diverse as Amazon.com, Cisco, Sun Microsystems, Oracle Corporation, Macromedia, Charles Schwab, and many other smart, creative and innovative people, from some of the Internet's top technologists to Martin Ehrlichman, Barbra Streisand's lifelong business manager.

 

Home