Choosing a patent attorney is one of the most important decisions you’ll make for your company’s IP strategy. The right attorney protects your innovations effectively; the wrong one wastes money on weak patents that don’t hold up when you need them.

After years on both sides of this relationship—as an engineer evaluating patent work and as an attorney doing it—here’s what actually matters when making this choice.

The Three Things That Actually Matter

Forget firm prestige and fancy offices. Three factors determine whether your patent attorney will serve you well:

1. Technical competence in your specific field
2. Communication quality throughout the engagement
3. Fee structure that aligns with your business reality

Everything else is secondary. Let’s examine each.

Technical Competence: The Non-Negotiable

Patent quality correlates directly with the attorney’s understanding of your technology. An attorney who doesn’t grasp what makes your invention novel will produce generic claims that competitors easily design around.

What to Look For

• Educational background — What’s their technical degree? Is it relevant to your field?
• Industry experience — Did they work as an engineer or scientist before law school?
• Patent portfolio — Have they prosecuted patents in your technology area?
• Technical publications — Do they write or speak about technical topics?

Questions to Ask

During your initial consultation, probe their technical knowledge:

• “What’s your background in [your technology area]?”
• “How many patents have you prosecuted in this field?”
• “Can you describe a technically complex case you handled recently?”
• “What technical challenges do you typically see in [your industry]?”

Listen for specific, substantive answers—not generalities. An attorney who claims to handle “all technologies” probably isn’t an expert in any of them.

Communication Quality: The Day-to-Day Experience

Patent prosecution takes years. You’ll work with this attorney through multiple office actions, strategic decisions, and possibly disputes. How they communicate matters enormously.

Responsiveness

How quickly do they return calls and emails? Patent deadlines don’t wait. An attorney who takes a week to respond to simple questions will create stress when timing matters.

Clarity

Can they explain complex patent concepts in plain language? You shouldn’t need a law degree to understand your own patent strategy. Good attorneys translate legal jargon into business terms.

Proactivity

Do they just react to your requests, or do they anticipate issues and opportunities? The best attorneys flag potential problems before they become crises and suggest strategies you hadn’t considered.

Accessibility

Will you work directly with the attorney, or will your matter be handled by junior associates? At large firms, the partner who wins your business often isn’t the person doing your work. Clarify who will actually handle your applications.

Fee Structure: Aligning Incentives

How attorneys charge affects how they work. Different fee structures create different incentives.

Hourly Billing

The traditional model. You pay for time spent, regardless of outcome.

• Pros: Transparent; you see exactly where time goes
• Cons: Unpredictable costs; no incentive for efficiency
• Watch for: Minimum billing increments (0.1 hour vs. 0.25 hour adds up), multiple timekeepers on simple tasks

Flat Fee

A fixed price for defined work (e.g., $12,000 for a utility application through filing).

• Pros: Predictable costs; efficient attorney is rewarded
• Cons: May encourage shortcuts; complex cases may not fit the model
• Watch for: What’s included vs. excluded; how out-of-scope work is handled

Hybrid Models

Flat fee for defined phases (filing, office action responses) with hourly for unusual situations.

• Pros: Balances predictability with flexibility
• Cons: Requires clear definitions of what triggers hourly billing

Questions About Fees

• “What’s your fee structure for patent prosecution?”
• “What’s included in your quoted price? What might trigger additional charges?”
• “Can you estimate total cost through patent issuance?”
• “How do you handle office action responses—flat fee or hourly?”
• “Do you offer any volume discounts for multiple filings?”

Get fee agreements in writing before starting work. Surprises on invoices damage relationships.

Red Flags to Watch For

Certain behaviors should make you cautious:

Green Flags That Signal Quality

The Consultation Process

Most patent attorneys offer free initial consultations. Use this time wisely:

1. Prepare a brief description of your invention — Enough for them to understand what you’re protecting
2. List your key questions — About their experience, approach, and fees
3. Note how they listen — Do they interrupt, or let you explain fully?
4. Assess the chemistry — You’ll work together for years; mutual respect matters
5. Request references — And actually call them

Talk to 2-3 attorneys before deciding. The comparison will clarify what matters to you.

Big Firm vs. Small Firm vs. Solo

Each structure has trade-offs:

Big Firms (AmLaw 200)

• Pros: Deep resources, brand recognition, full-service capabilities
• Cons: Higher rates, work often delegated to associates, may be low priority
• Best for: Large companies with complex, high-stakes portfolios

Mid-Size/Boutique IP Firms

• Pros: Specialized expertise, more partner attention, moderate rates
• Cons: May lack resources for certain matters (litigation, international)
• Best for: Companies with significant IP needs wanting expertise without BigLaw overhead

Solo/Small Practices

• Pros: Direct partner attention, lowest rates, flexible and responsive
• Cons: Limited bandwidth, may need to bring in others for some matters
• Best for: Growing companies wanting quality work with personal service

For most companies in the $10-100M revenue range, a boutique firm or experienced solo with the right technical background offers the best value: genuine expertise, direct attention, and rates that make sense.

Making the Decision

After consultations, ask yourself:

• Do they understand my technology?
• Do I trust their judgment?
• Can I communicate easily with them?
• Are their fees reasonable and transparent?
• Will I get their personal attention?

If you can answer yes to all five, you’ve likely found a good fit.