Prosecution and litigation are different jobs
Representing others in preparing and filing applications before the USPTO is reserved for practitioners registered with the office, and many of them hold science or engineering degrees. Litigating a patent in federal court calls for a different skill set, and while some lawyers do both, many concentrate on one side. When you contact a patent firm, ask who will actually draft the claims or argue the case, not just who signs the engagement letter. A chemistry background helps little with a mechanical design, and the reverse is also true. Checking a practitioner's registration on the USPTO's public roster takes a minute and is worth doing.
Conflicts come up more than people expect
Firms in this area often represent several companies in the same industry. A firm that already prosecutes patents for your direct competitor may be unable to take your matter, or may need consent from both clients before it can. Give the names of competitors and any party you expect to be adverse at the first contact, so the conflict check means something. Early conversations can involve confidential technical details, so ask how the firm treats information shared before an engagement is signed. Until the check clears, describing the invention at a general level is usually enough.
What gets settled at the outset
We usually start with what you are trying to protect and why: a core product, a licensing program, an investor's diligence request, or a defensive position. Bring any invention disclosure, drawings, lab notes, and a list of public disclosures such as demos, papers, or sales offers, with dates, because public activity can affect what can still be filed in the United States and abroad. We discuss how fees are structured for drafting, office action responses, and government fees, and which deadlines may already be running. You should leave knowing who on our side handles each piece of the work and what the next filing decision is.
