1. The Basics
A patent lawyer must have graduated from law school like any other lawyer. That’s where the similarity ends. A patent counselor must also have a degree in a science or technical discipline. The best ones will have experience working in their chosen technical specialty before studying law. Wide and varied experience in writing patents is also a big plus.
2. Deep Knowledge In The Field Of Your Invention
Knowledge in the field of your invention is vital. A biologist would not likely be a good candidate for writing a patent in the field of electronics. However, a good patent attorney will have education and/or experience in several technical fields. A patent agent (one who has a technical college degree and has passed the patent bar, but is not a lawyer) might be a better choice, if their technical education and experience is a close match for the field of your invention.
3. Successful Patents
You should expect successful patents from the patent attorney that you hire. Following are a series of questions that you should ask when interviewing potential patent counsel.
a. How many patents have you written?
b. Have any of your patents ever been challenged?
c. Have any of your patents ever been overturned?
d. What percentage of the patents that you have written have been financially successful for the inventor?
The answers to these questions will give you a good means of comparison between patent lawyer candidates.
Large patent law firms in big cities can be very expensive. The positive is they can afford to hire diverse talent on staff. Conversely the smaller firm in a smaller city can be a bargain, if they have the right patent counsel needed for your project. Shopping different firms in different cities can yield big dividends.