This post is a follow-up to my previous post entitled "Ten Reasons to Fire Your Patent Attorney." In that post I shared some signs that you might not be getting the best counsel from your patent attorney. In this post, I will discuss several additional factors to evaluate when considering whether you should cut ties with your attorney, and explain some nuances of patent examination.
1. Your application is rejected. Some studies show that approximately 90-95% of patent applications are rejected at least once, and experience confirms that this is likely accurate. Rejection is part of the examination process. In fact, receiving a first-action allowance may be a strong indicator that the claims were drafted too narrowly and that the client may have been entitled to broader coverage.
2. You didn't get a patent. Applicants may be quick to place blame on a patent attorney if an application does not result in allowance. Yes, it is possible that your patent attorney drafted the application hastily, that his arguments were poor or that he didn't carefully consider the prior art. It's also possible that the prior art was directly on point and that the application objectively had no chance.
3. He gives you bad news. Don't cut ties with your attorney simply because he delivers bad news. You want honest counsel from a trustworthy source. A patent attorney who is honest enough to deliver bad news is an asset in the long run provided that he is not responsible for the mess. However, if all you ever get is bad news with no creative solutions to your problems, then perhaps there's a conversation to be had.
4. He tells you to cut your losses. This is rare but should be expected. An attorney that tells you to cut your losses instead of continuing to drive up the bill is one that you should keep because you know that he will put your interests ahead of his own.
5. Your attorney is conservative in his approach. Applicants have an obligation to cite known prior art references that may be relevant to patentability. Citing prior art may set you back during examination as it may provide the patent examiner with new ammunition to reject your application. A conservative approach in erring on the side of citing prior art is necessary to ensure that a granted patent will be enforceable.
6. He doesn't make guarantees. Run, don't walk, from a patent attorney who unequivocally guarantees that you will get a patent, or some other outcome. It is fair game to ask about an attorney's experience, but understand that prior results will not guarantee a similar outcome. It is not only foolish, but also unethical for an attorney to guarantee outcomes. There are far too many unknowns and every project has its inherent risks.