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On the choice of a foreign patent attorney


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Quite often I have to deal with the question of applicants (i.e. patent applicants) about how to choose a foreign patent attorney or agent (hereinafter, for brevity, patent attorney, the differences in legal status will be left out of discussion) for patenting inventions in one country or another or in a group of countries. On the one hand, this question is rather delicate, for it is similar to the question of how to choose, say, a wife or friend ... On the other hand, the problem of choice objectively exists and needs to be solved somehow.

Most often, applicants choose a patent attorney on the recommendation, sometimes with the “method of scientific tyk.” If you want to make a choice based on more or less objective data, you will have to look for these same data.
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Each patent office has a list of patent attorneys accredited to work with this office. However, such a list contains the very minimum of information on attorneys - name, registration number, if applicable - specialization (inventions, trademarks, industrial designs, etc.), office address or postal address, telephone, email address, etc. . You will not find any instructions about the substantive (i.e., technical or scientific) specialization of patent attorneys, about performance indicators or the effectiveness of their work, or about the degree of satisfaction of their clients.

In order to form an opinion about an attorney, one has to carry out an entire research work — a search in the patent database of the applications that this attorney conducted (the “representative” and “address for correspondence” fields), the definition of the industries with which he had the most the case, an indirect assessment of his experience — by the number of applications filed, an indirect assessment of performance — by the ratio of the number of applications filed and the number of patents received, the calculation of the average time for obtaining a patent, etc. Then you can try to contact one of the applicants who were served by the specialist you are interested in and inquire about their impressions of working with him.

To simplify this task somewhat with respect to US patent attorneys, the PatentStat analytical resource, which recently came into my view , contains statistical data on 200 patent firms and 100 US patent attorneys and allows filtering by technical field. In addition, the resource contains analytics on state patent examiners who carry out verification (examination) of the patentability of the claimed inventions. Data on US patent firms and patent attorneys (number of patents granted, average patent time, forward and reverse citation index, average number of points in the formula, as well as a list of the most recent patents), determined by a very brief and streamlined procedure and percentiles will provide the researcher with more scientific fortune telling on the coffee grounds. However, apart from jokes, something is better than nothing at all, thanks to Yali Friedman, the organizer of this resource. And one more thing. While browsing the PatentStat site, I got the impression that not all the data available to this resource are available in free access, and that if you contact them for individual advice, you can learn a lot more about the people you are interested in. However, this is just my guess, I did not check it.

Source: https://habr.com/ru/post/288436/


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