Copyright 2013 Joseph R. Birkner, M.E., Registered Patent Agent


Deal only with licensed, Registered Patent Professionals.  Avoid “Wanna-Bee” persons who are not licensed to practice patent law and who offer to “help” unsuspecting inventors oftentimes providing poor legal (and illegal) advice resulting in costly and unnecessary issues.

Select a Patent Agent  who handles YOUR type of invention.

If you have a mechanical invention like a mouse trap with springs, choose a Patent Agent who is knowledgeable about mechanical devices and who has previously patented mechanical devices for clients. In this example, don’t hire a patent professional whose background is in chemistry, bio-medical, computer science, software,  atomic energy or plasma physics. Such persons may tell you that they do all types of invention disciplines but don’t be fooled. No one is very good at everything!  If you broke your leg you won’t go to a doctor who practices dentistry would you?  Of course not!

Ask the Patent Agent, what is your technical background?  If it matches your type of invention GREAT!  If not, then find someone who does match it!


Before hiring a Patent Agent, ask for testimonials of clients that he has worked with in patent matters.  Ask people in clubs, organizations, neighbors, or service providers for referrals regarding a Patent Agent.


Does the Patent Agent patiently listen to your patent needs and is easy to talk to and do you feel comfortable working with her or is she always too busy to talk with you?


Ask how many years have you worked in patent law as a Registered Patent Agent with the United States Patent and Trademark Office (USPTO)? 

CAUTION be aware of “new-bees” who may be  overly anxious to work with you with tempting cheap prices.  You probably have spent considerable time designing and developing YOUR  invention so it’s important to protect it properly. If your broken leg needed setting, who would you go to have it done?  A recent med school graduate or a professional doctor/ orthopedic surgeon who has set many bones in place??  A no-brainer!  Let the inexperienced patent person experiment and learn to write patents on somebody else’s invention as long as it’s not yours. Remember you get what to pay for, so choose carefully.

Ask, the Patent Agent how many patent applications have you conducted a patent search for, prepared and filed, prosecuted (ie. legally argued the case on your behalf with the Patent Examiner after she rejected your application’s claims), won cases on appeal after a Final Rejection by the United States Patent & Trademark Office (USPTO) and most importantly>>>>>>>>>>>>>>>

How many patents has the Patent Agent prepared, prosecuted and appealed, alone under his name, not someone else in his firm, and were issued to the client, showing his name as the Patent Agent on the record?   Ask to see them!

Often times, a person at a law firm “works just on a piece of a patent application” but does not, alone, write the most important CLAIMS or carry it through to when the patent  issues. It is always looked at by a superior, ie. a “safety net” albeit an expensive one. A patent professional having very few issued patents under their name is a red flag!  Inexperienced.  Although it is true that one has to start somewhere and over a long period of time may be very proficient much later, but now is not the time to have rookies work on  YOUR invention!


Ask, as a Patent Agent, are you also an engineer? What type>> Mechanical (M.E.), Chemical? Electrical?  Software?  One trained in these fields have the skills to work on YOUR  particular type of invention as mentioned above.  Remember, don’t hire a chemical engineer to work on a software patent application.  You will most certainly get a poorly written application.

Ask, the Patent Agent, have you ever worked for a company or law firm applying your technical or legal skills to projects there?  Understanding and experiencing, first hand, product development, costing, manufacturing methods, injection molding, metal fabrication and patents is an asset to be shared with you, the client. This is a bonus for YOUR benefit.

Ask, the Patent Agent, do you have any patents issued in your own name to you as the inventor? Ask to see them. This indicates that the Patent Agent was “in the trenches” like you, the potential client, and is knowledgeable with the trials and tribulations to take a product invention from a “scrawl on the back of a napkin” through the research, development and patent process to marketplace. He can apply this know how  to YOUR invention.


Caution! Beware of cheap patent services offered on TV and on the internet. Most such services, I have found,  are not worth it.  I had to re-do patent applications and even patent searches correctly and thoroughly that were done either by the inventor herself or by a patent service. Other badly prepared applications were un-fixable and some inventors have lost their patent rights due to shoddy preparation and improper filings.  Patent preparation done correctly is a complicated and lengthy process that can’t be learned entirely from a book due to the ever changing patent laws and rules. It takes years of Experience and Know-How to do it right.  This comes after conducting thousands of patent searches and preparing, filing and prosecuting many patent applications.

So, if you choose a Patent Agent to your liking based on the above suggested criterion who gives you a fair price based on his track record of successful patent practice, work with him.  Hey, if you can get a professional for a great price and get YOUR  patent work done right, why deal with a novice patent practioner and risk getting your patent application hastily and inadequately prepared by a rookie. 

“Don’t just sit there, INVENT!”  (Consigliere).
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