How to Find an Experienced Patent Lawyer for Your High-Tech Invention
Congratulations, you have invented or discovered something very cool. You are now planning to file a patent application to protect your intellectual property (IP). But how? Preparing a patent application is not a trivial task. The invention must be properly described and disclosed. The invention needs to be strategically claimed in the application to eliminate any loophole that can allow others to use your invention without technically infringing your patent. And the patent application must comply with the very complex body of patent laws.
Even though you yourself can file a patent on your own, it is highly recommended to hire a patent lawyer to properly prepare your patent application and protect your IP. But not all patent lawyers are equally qualified to work on your specific technical invention.
The common nightmare scenario
You hire a patent lawyer and share a technical document about your invention or discovery with your lawyer. Couple of days later, your lawyer sends you the first draft of the patent application for your review, comments, and approval. Very excited, you open the document to see how your precious invention has turned into a patent application. Your patent reads like "An apparatus, comprising a plurality of …" what!? Is this English? You don't even recognize or understand your own invention!
You call your lawyer frantically, asking if your lawyer has sent you the correct document. Your lawyer patiently explains the reasons behind the language and the strategy behind them. You still are not able to fully comprehend what the patent says. Eventually, you say to yourself let's hope the lawyer knows what is going on and you approve and confirm the application.
On the other side of the story, your lawyer may not fully understand your very technical invention. The lawyer is just writing his/her interpretation of your technical invention, hoping that you will correct or comment if there is anything problematic. But you might miss those issues because of the encrypted patent language.
At the end, the patent application may fail to correctly disclose the invention or miss to claim the critical parts of the invention or discovery, and you may end up with an invalid or unenforceable patent.
The root cause
The root cause of this situation is that there have been many litigated patents in which the choice of words has determined the outcome. These case laws about the patent language set precedence, and your patent lawyer is following them to keep you and your IP on the safe side. For example, see [1]. After all, “the law is a profession of words” [2]. But the problem is that this process comes at the expense of turning a patent application into a pile of legalese incomprehensible by most inventors. A patent document is a legal and a technical document. Any competent patent lawyer should be able to handle the legal aspects of the patent, but how about the technical side?
Bridging the language and technical barriers
The solution for the said problem is hiring a patent lawyer experienced in the technical subject matter of your invention. Such a lawyer can understand the invention to some extent and can communicate with you in your own technical language to understand different aspects of the invention and prepare the patent application and the claim set properly. But how to find such an experienced lawyer in your field of invention?
The problem with traditional directories
There are numerous local listings and online directories to locate a patent lawyer. Many of these directories come with the practice area and the technical specialty of each patent lawyer. Take as an example:
John Smith, Patent Lawyer, specialized in mechanical and computer technologies.
There are two problems with such directories:
- Such listed specialties are usually very broad, and they say very little if a patent lawyer is experienced in a specific subject matter.
- These specialties are self-claimed.
Meet Patent Lawyer Finder
This is a free, independent, and data-driven service to help inventors find experienced patent lawyers in their field of invention. To design this tool, all published patents and patent applications since 2005 are collected. A specialized deep learning model is designed and trained over this collection of patent data to learn the language commonly used in the patents. This trained model is further trained to measure technological similarity between the patents and a new summary of an invention regardless of the language used or the choice of the words. Basically, this model understands the legal languages AND the technical aspects of patents. This deep learning model is the core of the Patent Lawyer Finder tool.
How to use this Patent Lawyer Finder tool
- Go to www.solutions.stacksai.com and sign up. Signing up is free, takes 30 seconds, and requires no credit card information. To use this service, simply explain your invention or discovery in natural language. Imagine you have invented a new antibacterial sponge that cleans itself after each use. You can simply provide this explanation to the tool.
- Some lawyers file patents under their own names, others under their law firm names. Our system finds the name of the filing lawyer or law firm based on whatever is provided during the filing. You can select to see only the lawyers, the law firms, or everything. Then hit the search button.
This tool finds all the lawyers and law firms that have frequently been patenting inventions similar to yours and provides the following histogram of top service providers. Experienced lawyers or law firms in your field of invention with the highest number of similar patents are listed on the horizontal axis. The vertical axis is the number of similar patents each service provider has filed. You can click on each bar to see more information about that specific service provider, including the list of top relevant patents, experience in years and number of filed patents, contact information, etc. Depending on your selection in the previous step, these service providers can be lawyers, law firms, or both.
The histogram above could be biased in favor of larger law firms that file patents under the firm's name. Therefore they can outnumber the smaller law firms or individual lawyers in terms of the number of similar patents. Patent Lawyer Finder provides an alternative form of results that are not biased in favor of larger law firms, where the lawyers and law firms are sorted based on their closest patents to your invention in descending order. The lawyer or the law firm with the closest patented technology to your invention comes first regardless of how many similar patents they have.
What comes next after identifying a suitable patent lawyer
The next step you need to take is to directly contact the patent lawyer and discuss your invention and case.
Contact information of patent lawyers
The tool has the contact information of the majority of active patent lawyers in the United States. You will receive the contact information of your selected patent lawyer if this information exists in the database. Otherwise, you can search the lawyer's name to find it. Please note that there is a chance the lawyer is retired or not active anymore, and that's why the information was missing in the first place.
Contact information of law firms
A good portion of patents are filed under the law firm's name, and the law firm's name is what you will get. Please contact the law firm directly, give them the patent title and number, and they will provide you with the name and contact information of the lawyer in their firm that filed that patent.
What to discuss during the call
Your patent lawyer is a pro and knows the process, and will talk you through it. The main topics to discuss during the first call are the availability of the lawyer to represent you, the patentability of your invention or discovery, strategy, estimated cost and time, and presence of any conflict, etc. Don't forget to tell your lawyer about how the AI engine distinguished your lawyer as a top expert in your field of invention, and that's how you found them. Lawyers love to hear their prior work is recognized and is bringing in new clients.
Who we are
Stacks is a team of inventors, scientists, and engineers addressing some of the most challenging problems in law and business. Here at Stacks, we gather data, apply innovative, state-of-the-art machine learning techniques to the data, and produce actionable insights. To learn more about Stacks, please visit us at https://www.stacksai.com/.
References
- Brody, Tom. "Preferred embodiments in patents." J. Marshall Rev. Intell. Prop. L. 9 (2009)
- Mellinkoff, David. "The language of the law." Wipf and Stock Publishers (2004)