On the choice of a foreign patent attorney

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Quite often, I have to deal with the question of applicants (i.e., patent filing applicants) about how to choose the right foreign patent attorney or agent (hereinafter for brevity - patent attorney, differences in legal status leave out the discussion) for patenting inventions in a particular country or group of countries. On the one hand, this question is rather delicate, because it looks like the question of how to choose, say, a wife or friend ... On the other hand, the problem of choice objectively exists and it needs to be somehow solved.

Most often, applicants choose a patent attorney on the recommendation, sometimes “by the method of scientific poking.” If you want to make a choice on the basis of more or less objective data, you have to look for these same data.

Each patent office has a list of patent attorneys accredited to work with that office. However, such a list provides the minimum information about attorneys - name, registration number, if applicable - specialization (inventions, trademarks, industrial designs, etc.), office address or postal address, phone, email address, etc. . You will not find any indications of the substantive (i.e., technical or scientific) specialization of patent attorneys, performance indicators or the effectiveness of their work, or the degree of satisfaction of their clients.

In order to form an opinion about this or that attorney, one has to carry out a whole research work - search in the patent database of those applications that this attorney conducted (fields “representative” and “address for correspondence”), identification of industries with which he most had to have business, an indirect assessment of his experience - by the number of applications filed, an indirect assessment of effectiveness - by the ratio of the number of applications submitted and the number of patents received, calculation of the average time for obtaining a patent, etc. Then you can try to contact one of the applicants, who was served by a specialist you are interested in, and inquire about their impressions of working with him.

Somewhat simplify this task in relation to US patent attorneys will allow recently caught my eye analytical resource PatentStatcontaining statistics on 200 patent firms and 100 US patent attorneys and allows filtering by technical field. In addition, the resource contains analytics by state patent examiners who perform the examination (examination) of patentability of the claimed inventions. Data on US patent firms and patent attorneys (the number of patents granted, average time to obtain a patent, direct and reverse citation index, average number of points in a formula, and also a list of the most recent patents), determined by a very brief and streamlined methodology and expressed in percentile, provide the researcher with a more scientific fortune-telling on coffee grounds. However, in addition to jokes, something is better than nothing at all, for which thanks to Yali Friedman), the organizer of this resource. And one more thing. While browsing the PatentStat website, I got the impression that not all the data available on this resource are freely available and that by contacting them for individual advice, you can find out a lot of interesting things about the people of interest to you. However, this is just my guess, I did not check it.

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