How important is patent attorneys' experience?

Go back to home page || Go back to last page

A.Benefits of Experience in Resolving Procedural Issues

Practicing experience can help a patent attorney increase efficiency in handling procedural issues. An attorney who has filed a paper knows exactly what he needs to do to file a similar paper. In other words, experience can help the attorney avoid spending time to conduct research in procedural issues. Experience can also help the attorney reduce the chance of making mistakes. However, licensed patent attorneys who have passed a licensing examination generally have enough knowledge of the relevant procedure because many of the questions are intended to test applicants' abilities to handle procedural issues.

B.Reducing Legal Fees for Drafting Mechanical Patent Claims

Experience is important for drafting mechanical patent claims, especially when billing is based upon billable hours. An experienced patent attorney will spend less time to draft claims defining many interactive parts. In contrast, an inexperienced attorney may have to pick up right terminology by studying a few prior art patents in the same field. Therefore,the inexperienced attorney may bill more time if attorney fees are based upon billable hours. However, if attorney fees are fixed, experience will not affect attorney fees.

C.Marginal Benefits of Experience in Drafting High Tech Patent Claims

Experience in preparing patent applications in high tech fields is generally not helpful at all. There are several reasons. First, preparing patent applications is a superficial learning process. One who has prepared a patent application in chemical kinetics will not really understand the whole body of knowledge of kinetic theories. Sometimes, a patent attorney may spend many months to study a doctoral thesis. This excessive time is necessitated by attorney's lack of background knowledge. Hiring a wrong patent attorney on a billing retainer agreement can waste a great deal of money. Sometimes, certain subjects cannot be understood by a person without first learning many basic subjects.  For instance, to deal with an invention involving spectroscopic methods,  a patent attorney needs to know quantum mechanics, inorganic chemistry, solid states, spectroscopy, and instrumentations. Neither practice experience nor the time length for studying the invention would make a real difference.That is why patent attorneys often decline take cases outside their expertise because their experience does not help.

Second, a patent attorney cannot extend her or his own experience in our macroscopic world to things such as molecules, atoms, and structures of living beings, which are governed by different rules. In contrast, human experience with weights, shapes, sizes, speeds, distances, measures, momentum, force, and friction are directly applicable to mechanical devices. This is why a patent attorney can extend her or his experience to mechanical inventions but not to high tech inventions. Many mysterious phenomena in high technology arise from quantum mechanics, which cannot be understood by merely practicing patent law.

Patent examiners in the Patent and Trademark Office (the "PTO") are trained in the fields of their expertise. Many patent examiners hold master's and doctoral degrees. They are technicians and scientists, rather than attorneys. They routinely decide on the issues related to inventive merit.  Patent prosecution is therefore battles between patent attorneys, who often have marginal science background,  and patent examiners, who have expert knowledge in the relevant fields. It is patent examiners that ultimately make administrative decisions concerning patentability. Some patent law firms probably have long felt their disadvantaged positions and started to follow the PTO's hire practice in recruiting associates. Those observations suggest that experience cannot substitute for rigid academic training in specialized technology fields.

D.Negative Effects of Excessive Experience

Excessive experience may have very negative or even damaging effects in three situations. First, experience works against changes while our legal environment evolves constantly.  The patent statute and the PTO rules are amended frequently (the last revision occurs in 2001). Whenever rules are changed,no attorney has experience in doing legal work under the rules. Inexperienced attorneys will do their jobs by the book while experienced attorneys will do the same things in the old ways, which are wrong under the new rules. Experience in this situation will only increase the chance of errors. 

Second, excessive experience may create unpredictable conflict-of-interest problems. A patent attorney, who has practiced for a very long time, might have provided legal services to clients' opponents or future infringers.In this conflict-of-interest situation, the attorney cannot represent the client against his current or former client and may have to withdraw in the middle of representation.  Such withdrawal not only can negatively affect the client's case but also cause the client to pay a great deal of more legal fees arising from a change in representation. That is why law firms are more willing to hire new law graduates as "clean slates" than experienced lateral associates. This is a very effective measure to eliminate potential conflict-of-interest problems which may ruin clients' cases and disrupt their business.

The worst effects of EXCESSIVE experience arise from the  operation of a peculiar law known as the doctrine of inequitable conduct. This law requires patent attorneys to disclose everything they know to have a material bearing on the patentability of the invention under prosecution to the PTO.  According to this law, a patent is unenforceable if its patent attorneys and inventors have failed to disclose material information. Clients' competitors or infringers can alwadys examine all patents that the clients' patent attorneys have prosecuted to find if they have omit any materials in the Information Disclosure Statement. If they find a piece,  they will ask the court to invalidate the patent. The time necessary for checking their own knowledge and the risk of errors in properly identifying relevant information are directly proportional to the practice length of the attorney. If several senior patent attorneys work on an invention, all of them will need to review their own past cases to make sure their disclosure will be complete and leave no room for finding faults. This can cause the client to pay a great deal of attorney fees. If any of them inadvertently omits an important paper or patent, the patent matured from the application may be useless.When the attorney has a publication or patent, it is very hard to prove that the attorney made an innocent mistake. The client may be punished in two ways: the client pays a large amount of legal fees for examining attorneys' knowledge, and  the client may pay the ultimate price for the attorney's advertent omission. This is much worse than the benefits that experience can bring. While a mistake from inadequate experience most likely can be remedied by filing amendments or other papers, a mistake in disclosure may turn the patent into a piece of junk, which may only incur potential antitrust liability, product liability, and fraud liability.

E.The Clients' Complaints and Attorneys' Experience

There are two more interesting observations concerning practicing experience.Among complaints filed against attorneys in the District Columbia bar in 2001,most of them are concerned with misconduct that occurs 9 to 16 years after attorneys' first law licenses. This data is somehow correlated to malpractice suits. Most of the attorney malpractice suits reported in appellate opinions in Maryland arose from neglects, omission, failure to do legal research, and intentional wrongs.  Most common causes of action arose from missing statute of limitations, failure to take care of legal matters, and filing papers in wrong courts.  It is extremely rare that attorneys are found liable for a judgment errors from lack of experience.  Neglects of clients cases is probably by far the most common cause of complaints in any state bar.  Some appellate options concerning attorneys cases reveal that experienced attorneys intake more cases than they can handle, and they have to take care of problems in the last days of  statutory or judicial responding periods. Sometimes, they miss deadlines or file papers without adequate research. A similar problem can be seen in the U.S. patent database. Indeed, many U.S. patents reveal that the law firms file provisional applications and then file non-provisional applications on the last day for claiming the priority from provisional applications.  Clients, who retainer firms by experience and reputation, actually get far less attention in legal representation. They get attention only when their cases cannot be postponed further!  What they get is premium billing.

Despite statistical data pointing to negative the roles of experience, law firms, which have existed for decades and centuries, enjoy using experience as a marketing tool.They have created a climate where experience is regarded as an important criterion. They promote and maintain this speculative value system despite its contrary roles as revealed by the indisputable statistical data. In reality, no one in those firms can carry centuries experience to his or her post. Old attorneys were not required to pass bar examinations. What would be the chance for senior partners to pass current bar examinations?  While enjoying claiming their experience, old law firms recruit "clean slates" to avoid conflict-of-interest problems and hires new graduates who have stronger ability to adapt to new legal environment and can handle tough technical problems.

Each invention, by the nature of invention, must be new in some aspects.  Thus the most important criterion in selecting patent attorneys is their actual abilities to understand new subject matter and to consider all kinds of future events and possibilities.  Law firms that have existed for centuries let law clerks, legal assistants, and new associates do the work. In many technical fields, experience is an unreliable criterion. It is important only in cases where inventions are complex mechanical devices AND where attorney fees are based upon billable hours. Even in this case, it carries with it many material risks.

A client who buys legal services should understand what it really gets for a premium price.

For more information, please contact the firm

Go back to home page || Go back to last page