“How do I find a patent attorney near me?” is a common question. Not long ago, when people shopped for legal services, they shopped nearby. This was for a variety of reasons, including the need to be able to communicate with their attorneys without incurring a long-distance phone call bill.
As we all know, the Internet changed this forever. Nowadays, it’s common for us to shop for services online, which could be performed by a service provider on the other side of the world. This practice needs no expounding, as we all engage in it every day. However, one industry in particular has been slow to adapt.
The Legal Profession Is the Tortoise of Globalization
The practice of providing services remotely in B2B and B2C contexts has become the norm in many industries. But, in law, perceptions change slowly both among the bar and among consumers of legal services. This is due at least in part to:
- State rules restricting the practice of law
- Perception among consumers of legal services that lawyers have to be local
In the United States, lawyers are licensed and governed by state courts, which set forth rules of practicing law and what it takes to qualify one to practice law. In this way, the practice of law is an industry that is “self-policing.” This is why lawyers generally must be barred within the state they are practicing law. This entails taking a bar exam and being admitted by the appropriate court.
Practicing in areas of state law such as wills, criminal law, much of tort law, and others are restricted to lawyers admitted within the state of practice. In other words, a lawyer admitted only in Illinois is not able to assist New York clients in preparing wills. To do otherwise would be considered an unauthorized practice of law, grounds for disbarment, and in many cases, a crime.
Thus, the marketplace in general still understands lawyers as needing to be from, at a minimum, the same state as the client. In reality, this is different for certain areas of law, like patent law.
Can Patent Attorneys Practice in Any State?
Registered patent attorneys can practice in any state in the country. Patent law is entirely in the federal domain. As such, the requirements to represent clients before the U.S. Patent and Trademark Office as a patent attorney can be summarized as:
- The attorney is duly licensed as an attorney in at least one state.
- The attorney has passed the U.S. Patent and Trademark Office registration examination (commonly called the Patent Bar Exam), and completed other requirements set forth by the federal government for admission.
So yes, I had to pass two bar exams. Thank goodness that’s over.
For constitutional law nerds like me, this principle was solidified when Florida sought to prosecute a man named Mr. Sperry for practicing patent law within the state of Florida while not licensed as an attorney by Florida.1Sperry v. Florida ex rel. Florida Bar, 373 U.S. 379 (1963). The Supreme Court held that under the Supremacy Clause of the U.S. Constitution, the Florida unauthorized practice of law rules, though otherwise valid, have to yield to the CFR.2That is, the Code of Federal Regulations, with the relevant authorization now located at 37 CFR 11.5.
In other words for patent law, what the federal government says, goes. That is, if Congress sets forth requirements for the license to practice patent law—which it authorizes the Department of Commerce to do—states must respect that license.
So, Am I Required to Find a Patent Attorney Near Me?
In short, no you are not required to find a patent attorney near you. Unlike most areas of law, your patent attorney does not need to be from the same state as you or your business. Registered patent attorneys may serve clients nationwide. Whether your patent attorney should be near you comes down to whether you will be meeting frequently in person (we do travel for occasional meetings!), which is almost always not necessary or ever done.
So you may be wondering, “If I am not required to choose a patent attorney near me, how do I choose?”
How Do I Choose a Patent Attorney?
You have to choose a patent attorney that fits you, your invention, and your business. Here are some factors you should consider when evaluating a patent attorney:
- Does this patent attorney practice in the field (broadly) of my invention?
- Does this patent attorney communicate well?
- Can I see myself working with this patent attorney for at least a few years?
Taking each in turn:
Field of Your Invention
Just like in any profession, not all patent attorneys are the same. Like the difference between a civil engineer and an aerospace engineer, you don’t hire one in place of the other. There is a great deal of experience gained by practicing within particular fields. For instance, writing and chemistry patents is far different than writing mechanical patents. I generally recommend, at a minimum, one should distinguish patent attorneys who practice in the “wet” fields (biology, chemistry) from the “dry” fields (electronics, mechanics, software). Software truly is a beast of its own due to quirks in the law, so it takes an attorney with experience in software to provide you the greatest value. If a patent attorney tells you he or she practices, individually, in all fields or wholly unrelated fields, that’s a red flag.
As an example, a physics & software guy like me does not and should not draft patent applications for biological inventions. To do so would be underserving clients. In view of this, when clients approach me regarding biological inventions, I bring in trusted patent attorneys who do excellent work with these types of inventions.
Emphasis on Communication
I always say it’s better to solve it an issue over a five-minute phone call then have to solve it with a week’s worth of legal work because that five-minute phone call didn’t happen. Furthermore, in patent law particularly, lack of communication can be disastrous.
Communication is essential in patent law. I’ve had clients come to me after working with attorneys who did not communicate well, or when the phone answered they could practically hear the billing meter running. Based on what has been shared with me, this is one of the biggest reasons clients feel underserved by the legal profession.
At Mertzlufft law, communication is critical to everything we do. Actions speak louder than words, so we don’t bill time for most client phone calls and emails.
If a client of ours wants to call, whether it’s for five minutes or for an hour about their invention, strategy, pain points, or other issues, we’ll take the call and there’s no need to worry about a bill showing up. For those noting that I wrote *most* client phone calls above, the exception to this rule is when a call is pre-planned, pre-authorized, and covers substantive work in a case, almost always involving a third party (e.g., a USPTO examiner interview, an appeal hearing, a negotiation with an investor, etc.).
It’s a Long-Term Relationship
Patents take a long time. It’s important to know going into the process that the patent attorney that you select can grow into a trusted partner ideally, a constant struggle if not in the right field, or a catastrophe waiting to happen if communication is poor. To put it simply, you should select somebody you like, get along with, and *want* to work with. The reasons why you like your patent attorney may vary, but it’s important that you like them all the same.
Usually the first two factors can take care of the third.
Bonus: The Cost-of-Living Arbitrage
The ability to engage patent attorneys from anywhere in the country opens up excellent opportunities to benefit from the fact that the cost of running a business is lower in many places outside of the traditionally large markets. For instance, you can get much more bang for your buck from a patent attorney working in a small city like Buffalo than from one working in a big city like San Francisco.
Selecting a patent attorney should be done before or very early on in the startup process. Limiting yourself to a “patent attorney near me” or within your state is unnecessary. Registered patent attorneys can practice patent law nationwide, so it’s more about whether a patent attorney is a good fit with you, your invention, and your business.