Jeffrey Schox: Who to Choose as a Patent Attorney?

The last section I'm going to cover is who to choose as a patent attorney. Slightly tongue in cheek here, the Supreme Court has said that writing a patent application is actually the hardest legal document there is. And so you want someone who's actually done this a few times. The concept of describing an invention is a very technical thing. It's an engineering thing. But to be able to figure out these are the claims, these are the 200 words, these are the five bullet points that we're going to go after that's going to distinguish this invention from everything that's been done in the past, and that is going to provide protection against everything that could happen in the future is really hard. That's an art form and it takes a long time to figure that out. So to work with someone that actually has a decent amount of that legal experience and by a decent amount has written 100 patent applications or more, when they're figuring out what 200 words to choose, they need to know what they're talking about. If you came to me with a hardcore pharma invention, I wouldn't know what half the words mean. So how could I choose what those 200 words should be? Going to the patent office with an independent claim. So each patent attorney has some kind of background and they're going to have some kind of comfort zone of what they can write intelligently on and what they can't. My background's mechanical and electrical degrees and I do a significant amount of software and we actually do a decent amount of bio. So those are all areas that I feel comfortable with. But there are certainly other areas that I don't feel comfortable with. And so to work with someone that has that kind of technical background and by simply describing your invention to them, if they can't come back and describe it back to you and reflect that, they'd be able to talk about what is patentable and interesting about that. That is a huge, huge red flag that you need to be working with someone that understands your technology. Startup patent law is very, very different than Fortune 500 patent law. Fortune 500 companies typically don't use that provisional process. They typically don't use PCT process to be able to delay what countries they should enter. And they typically are working with folks that have patent attorneys that know or only know how to write a patent application on what they're given by in house patent counsel at a Fortune 500 company. Work with someone that actually understands startups and understands these kind of the patent technology development curves and more importantly, the funding curves. So much about building a patent portfolio is actually timing the provisionals so that you file a provisional on a seed round and you actually convert it after you raise an A round. Patent applications are really expensive. Being able to understand and work with someone that gets that kind of the typical flow of a startup is incredibly important. And lastly, what I think is super important when choosing a patent attorney is proximity. Being able to work on the same whiteboard and be able to have that brainstorming session to be able to say, please come over to the lab, we need to show you something. To be able to walk over and be able to say, hey, see our new demo? These are things that are very difficult to do over Skype. And when every single word counts in an independent claim, like you want someone to make sure that they understand every single bit about your invention, I think that proximity is incredibly important.