Answered on Quora: Can outside counsel patent attorneys show good technical understanding and good grasp of the law by providing issued patents?

Can outside counsel patent attorneys show good technical understanding and good grasp of the law by providing issued patents?

Daniel Becker, Patent Attorney and Early-stage Engineering (2013-present)

Answered 21h ago

Can you give more information?

If you are someone seeking information about patent attorneys, I think that the answer is that it depends upon whether you are familiar enough with patent law to detect whether writing is good or not.

If you are someone seeking to prove your mettle as a patent attorney, though, and you are concerned with showing technical understanding to other patent attorneys or prospective clients, then that depends upon whether you think you stand good odds of impressing someone who already does the same sort of work.

This has been my experience, though:

  • other patent attorneys are unlikely to be impressed. Everyone writes differently, and nobody seems to like how anyone else writes. Some of this is down to background. Many patent attorneys were patent examiners, and those attorneys tend to write very good applications, but sometimes do not impress other attorneys that have been in large firms and tend to write strategically, and particularly those which have had the benefit of working for very large clients with many large projects that each have a cumulative ongoing and recursive pattern of work.
  • If you are a small entity/ practice, you often have to do more with fewer documents. That means that you work may be overly detailed or more narrowly claimed than what a large firm might typically practice.
  • If you are someone with high expertise, there should be easier ways to show that you are competent or it may be easier to impress others if you can manifest an outward perception of competency. I’ve found that many of my peers and prospective clients are more impressed by how I do things that they do not expect attorneys to be able to do easily. Engineering input, marketing suggestions, good telephone and email communications ability, offering services that demonstrate a skill that they may not even need (CAD modeling, 3d printing, etc.)
  • Nobody really wants to ready other people’s work. Patents are labyrinthine and are typically poetically crafted, if you look hard enough. But they are rarely fun to read. Often, the highest-sophistication technologies are also the hardest forums for showing your own flair or style. It is hard to tell where the inventor writing the disclosure ends and the patent attorney begins, when the tech gets very sophisticated.
  • I have had the benefit of working with many solo inventors for many years, though, and what built my reputation, and which creates a good 75% of my referrals, are from people who believe that I am good at what I do, the vast majority of which have probably read very very little of my work. But they have run into my former clients, and read my reviews, and we have had good conversations, where they found value in what I was able to communicate.
  • It takes a very very long time to build your niche, your brand, but time is what makes it possible.
  • I recently received a patent for my own invention. I expected to be able to use it to showcase my skills, but really, people were just more interested in that I had invented and that the patent had issued, and that I had even bothered to take the time to go after it myself. While the earliest publication has been in public view for years, I doubt very much that anyone outside of my closest peers have actually read it.
  • Also, there is a risk of projecting an air of a lack of experience, to go our of your way to submit documents, unless someone specifically asks for a sample. People who have long careers or long experience with other patent attorneys have seen so many documents, good and bad, and often with a small correlation between the best documents producing the best patents, that they might be suspicious, at the presentation of a good, singular, document, or even a handful, rather than a link or a recitation that somewhere out there, there’s just a lot of work.

I hope that helps.

having SAID all of that, though, you’ve gotta start somewhere. If all you have are the things that show that you understand tech or understand the process, then that certainly beats a risk of giving a bad first impression. What might actually more effective is to practice saying things like, “Yeah, if you want to see something I’ve worked on, just drop me a line. Whenever I hear from you, I’ll just grab whatever isn’t currently confidential that is recent and let you look it over. It would help if you could give me some details about what sort of thing would pique your interest, too.”

It’s the outward air that you have just SUCH a massive amount of examples that there is a reasonable basis for PRESUMING that you are good, which maximizes the ability of people to have confidence, without an opportunity to really examine or judge your actual competency.

On an earlier resume, I wrote a lot about my invention, before it issued, and one attorney told me that my focus and amount of detail about a particular thing said that it did give some confidence that I’d be able to make it in the field. However, he also said that it made me look a bit juvenille and wet-behind-the-ears. He said that he’d worry that I’d be someone who would need training, and would prefer to just have an impression that he could bring me in and shovel work at-me.

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