Selecting an Attorney to Protect Your Innovation
Make sure your attorney understands your innovation.
A number of situations may lead you to seek an attorney’s advice: a complex license negotiation, a dispute over your invention, or a simple need for guidance. Attorneys have various specialties, and you will need to select a lawyer who is qualified to provide the advice you need.
Intellectual Property Attorneys
Don’t make the mistake of hiring a lawyer whom you trust but who works in a different field—such as the lawyer who masterfully handled your friend’s personal injury case. Intellectual property law should be handled by a specialist. Second, you should find an attorney who has expertise in the particular type of intellectual property that applies to your invention. Some intellectual property attorneys specialize in one type of intellectual property, either copyrights, trademarks, or patents. If, for example, you are concerned about ownership or licensing of a patented invention, you should seek an intellectual property attorney who specializes in patents.
You can find an intellectual property lawyer in Nolo's Lawyer Directory. The American Intellectual Property Law Association (AIPLA) may also be able to assist you in locating attorneys in your area.
Other Legal Specialties
For certain tasks, you will need an attorney who specializes in a particular area other than intellectual property. If you have concerns about taxes or an IRS dispute, you will need a tax attorney; if you are overwhelmed by debt, you will need a bankruptcy attorney; if you are sorting out your business form (for example, forming a corporation), you will need a business attorney. In addition to all these specialties, some lawyers focus on litigation. Not all intellectual property attorneys are litigators. If you have a license dispute and want to sue someone (or someone has threatened to sue you), you will need an intellectual property attorney who specializes in litigation. Litigators usually bill on an hourly basis, though sometimes they may take a case on contingency. Under this arrangement, if you win, the attorney receives a percentage—usually one‑third to one-half—of any money recovered in the lawsuit. If you lose, the attorney receives nothing.
Interviewing an Attorney
When interviewing an attorney, ask questions about clientele, work performed, rates, and experience. If you speak with one of the attorney’s clients (for example, another inventor), ask questions about the attorney’s response time, billing practices, and temperament.
How to Keep Your Fees Down
Most attorneys bill on an hourly basis ($250 to $400 an hour) and send a bill at the end of each month. Some attorneys bill on a fixed-fee basis. That is, you pay a set fee for certain services—for example, $5,000 for a license negotiation. In order to reduce the size of your bills:
- Keep it short. If your attorney is being paid on an hourly basis, then keep your conversations short (the meter is always running) and avoid making several calls a day.
- Consolidate your questions so that you can ask them all in one conversation.
Get a fee agreement.
We recommend that you get a written fee agreement when dealing with an attorney. The fee agreement is a negotiated arrangement establishing fixed fees for certain work rather than hourly billings. Read it and understand your rights as a client. Make sure that your fee agreement includes provisions that require an itemized statement along with the bill detailing the work done and time spent, and that allow you to drop the attorney at any time. If you can’t get fixed billings, ask your attorney to estimate fees for work and ask for an explanation if the bill exceeds the estimates.
Mad at Your Lawyer?
In many states, such as California, a client always has the right to fire an attorney (although this does not terminate the obligation to pay the attorney). If you don’t respect and trust your attorney’s professional abilities, you should switch and find a new attorney. Beware, though: Switching attorneys is a nuisance and you may lose time and money.
Review billings carefully.
Your legal bill should be prompt and clear. Do not accept summary billings, such as the single phrase “litigation work” used to explain a block of time for which you are billed a great deal of money. Every item should be explained with the rate and hours billed. Late billings are not acceptable, especially in litigation. When you get bills you don’t understand, ask the attorney for an explanation—and ask the attorney not to bill you for the explanation. Be careful if you engage a law firm. If you sign a fee agreement with a law firm (rather than a single attorney), be careful to avoid a particular billing problem sometimes referred to as multiple or “bounced” billings. This occurs when the same work is performed by several attorneys. For example, two attorneys at the firm have a 15-minute discussion about your case. You are billed by both attorneys. To avoid this, make sure that your fee agreement does not bind you to this type of arrangement. If you are billed for these conferences, send a letter to your attorney at the firm explaining that you only want that attorney to work on your case and that you should be contacted before work is assigned to another attorney at the firm.
What Is a Retainer?
A retainer is an advance payment to an attorney. The attorney places the retainer in a bank account (in some states, this must be an interest‑bearing account), and the attorney deducts money from the retainer at the end of each month to pay your bill. When the retainer is depleted, the attorney may ask for a new retainer. If the retainer is not used up at the end of the services, the attorney must return what’s left. The amount of the retainer usually depends on the project. Retainers for litigation, for instance, are often between $2,000 and $5,000. Watch out for hidden expenses. Find out what expenses you must cover. Watch out if your attorney wants to bill for services such as word processing or administrative services. This means you will be paying the secretary’s salary. Also beware of fax and copying charges. Some firms charge clients per page for incoming and outgoing faxes. Other firms charge a per-page copy fee that surpasses any commercial copy center. Look out for these hidden expenses in your fee agreement.
Do your best to limit the attorney’s services.
It is common for a license to take one to two months or more to negotiate. These agreements go through many drafts. You can help to limit the number of drafts by reaching a clear agreement with your attorney as to the goals of the negotiation. For example, if getting a $10,000 advance is most important, tell your lawyer that is your number one priority. Once you have achieved most or all of your goals, then be flexible on remaining issues so that you can save time. Don’t take litigation lightly. As a general rule, beware of litigation! If you are involved in a lawsuit, it may take months or years to resolve. Some go on for decades. It often costs $10,000 or more, and the only ones who profit are usually the lawyers. If you’re in a dispute, ask your attorney about dispute resolution methods such as arbitration and mediation. Often, these procedures can save money, and they’re faster than litigation. If those methods don’t work or aren’t available, ask your attorney for an assessment of your odds and the potential costs before filing a lawsuit. The assessment and underlying reasoning should be in plain English.