CALL US NOW ON 01494 422626
I’ve been asked this question by a couple of recent potential clients, so I thought I’d address it today. The TL:DR* executive summary is “you probably shouldn’t worry”.
It’s one of those questions that feels sensible to ask. After all, your patent attorney is going to write a full description of your technical idea, and is going to analyse it and the earlier disclosures that can be found in order to identify what is clever about your idea, and why. Surely that will be easier if the patent attorney knows that field inside-out? Well, it depends!
If we look at the very broad end of the spectrum, i.e. whether your invention is a mechanical one, a chemistry/pharma one, or a biotech case, then it is important that the patent attorney you choose has a technical background that reflects that. It’s easy to tell which field is relevant, the old joke is that if it smells, it’s chemistry, if it wriggles then it’s biology, and if it doesn’t work then it’s physics. We at Downing IP deal with ideas in the physical, mechanical, and software/algorithms fields. If your stuff smells or wriggles instead, then there is a very good firm that we will refer you to, as I (quite simply) don’t understand how those things work. At that level of abstraction, it’s both obvious whether we can help, and also a professional conduct issue – one of our rules of conduct specifically notes that we “should only undertake work within [our] expertise or competence”. Indeed, it was only a few days ago that I turned a new enquiry away because the idea was biotech-related.
Assuming, though, that there is a general match between your idea and the patent attorney’s scientific field of expertise, should you drill down and hunt for someone with expertise that is a one-to-one match to your idea? For example, I’ve done plenty of work in the automotive field, would I be a great pick if you want a patent for your novel vehicle suspension? Sadly, no – I wouldn’t, because helping you with that would be a conflict of interest for me. In drafting your application, I’d be using knowledge gained from my existing client and it wouldn’t be clear whether my suggested scope of claim was in your interests or theirs. So whilst you do need a match at the very broad end of the scale, you need there not to be a match at the very precise end of the scale.
The thing is, the question feels sensible, but isn’t. You’re not paying me for my specific technical expertise – that’s what you bring to the table. You’re paying for my ability to understand a new concept, to pick it up quickly, to do the same with whatever prior-art documents we find, and to find ways of defining the difference between your idea and the known arrangement. What we look for in aspiring patent attorneys is that flexibility, plus an inquiring mind that wants to know how things work, and a detailed (almost pedantic) approach to the language used to describe it. That’s what you should be looking for, too.
Anyway, as a thank-you for reading all this way, and as an example of the patent attorney approach to language, I was reminded on LinkedIn this week that a former colleague and I always used to blink when descending the elevators of our local rail station down to the platform to catch the train into London, because the prominent sign warned us that “Dogs must be carried”. The problem was, we kept forgetting to bring one. So I was delighted to see this video from April Fool’s day in 2011, when some volunteers brought a collection of dogs to the a station, and offered them for hire to passengers who wanted to comply with the signs.
Until next time.
Michael
* TL:DR - too long: didn't read
