Registration Numbers

Due diligence in patents requires looking at the patent attorney.

When I review patent applications, I always download the full prosecution history of the patent from the USPTO. The prosecution history is the formal, legal record of the back-and-forth between the applicant and the Patent Office, and includes all the papers as originally filed, as well as the rejections from the examiner and the responses from the applicant.

One thing of particular importance to me is the registration number of the attorney or patent agent. The registration number is assigned when the practitioner passes the Patent Bar Exam and stays with them for life.

The key thing I glean from the registration number is the experience level of the attorney/agent. That can be inferred from when they passed the patent bar.

Patent Attorney Registration Numbers:

• Numbers 1-10,000: Pre-1950
• Numbers 10,001-15,000: Early/Mid 1950s
• Numbers 15,001-20,000: Late 1950s/Early 1960s
• Numbers 20,001-25,000: Mid/Late 1960s
• Numbers 25,001-30,000: 1970s
• Numbers 30,001-35,000: Early/Mid 1980s
• Numbers 35,001-40,000: Late 1980s/Early 1990s
• Numbers 40,001-45,000: Mid 1990s
• Numbers 45,001-50,000: Late 1990s
• Numbers 50,001-60,000: 2000-2005
• Numbers 60,001-70,000: 2005-2010
• Numbers 70,001-75,000: 2010-2015
• Numbers 75,001-80,000: 2015-2020
• Numbers 80,000 and up: after 2020

Is older inherently better?

Just because someone has a very old registration number does not mean they have “good experience.” Patent law changes at a glacial pace, but it does change. The Patent Office modifies it practices every so often, District Court and CAFC rulings move the needle a couple times a year, Supreme Court cases come along every few years, and every decade or so, Congress issues new rules.

Many practitioners get stuck in the techniques and strategies that were appropriate when they learned the trade. The best way to learn the trade is to serve an apprenticeship under a more experienced attorney, and, like any apprenticeship, the journeyman learns this system.

There are some tell-tail signs of “old-school” practitioners, such as line numbers on the original filing. The USPTO switched from line numbers to paragraph numbering nearly 20 years ago, but there are still some practitioners (and those who learned under those practitioners) who still use line numbering.

A key thing about older practitioners (and the next generation that were trained by these older practitioners) is that their long-term IP strategies can be radically different than what is currently appropriate. You see this in techniques like very long patent applications, non-publication requests, patent profanity, etc. Additionally, many older practitioners still like the strategy of provisional patent applications.

Is newer better?

Newer patent attorneys/agents come in two flavors. One is the “self-trained” patent attorney/agent who never went through the meat grinder of a law firm. The biggest problem with patent law – from the patent attorney’s growth – is that the feedback loop for their mistakes can be years or decades. Consequently, anyone who is “self-trained” can be making mistakes for 30+ years over the course of their career that they do not even realize. As well-meaning and hard-working as these practitioners might be, their work product may have latent problems that only pop up ten years in the future during litigation.

The law firm-trained attorneys can, indeed, get a much better start to their career. A practitioner who has an excellent mentor who takes the time to review the work product, discuss strategies, and tell endless war stories can come out of the apprenticeship period with a good framework. However, it is completely dependent on the quality and dedication of the mentor.

For Big Law, associates are billed out at staggeringly high hourly rates – when they have zero experience. Consequently, there is little time for lengthy discussions of how to write a background section of a patent application – the new associates are just thrown to the wolves in many cases. Sometimes – but very rarely – does a young associate in Big Law produce reasonable work product.

Who are their clients?

The type of clients can tell a lot about the attorney – sometimes. Sophisticated patent filers that have inhouse counsel inherently or explicitly require a high standard from their outside counsel. As a prior outside attorney for Microsoft, I can attest that they will force the outside counsel to produce high quality patents. You quickly shed bad habits as your feet are held to the fire.

It is very easy to see which attorneys have worked for demanding clients and which have not.

Practitioners who focus on independent inventors and startups tend to be “self-taught” and have a very poor strategies and practices. Independent inventors and startups tend to demand low-cost, corner-cutting legal services, so these practitioners adopt may bad habits to address their client’s needs. These strategies tend to always file provisional applications, especially at low cost, as a way to “lock-in” the client to file a (more costly) non-provisional a year later. Under the guise of “the client asked for it,” it is my contention that these attorneys are not serving their clients to get the best patent clients.

Where is the sweet spot?

The sweet spot is hard to find. There are certain factors (like the use of provisional applications) that are a dead giveaway that the patent quality is likely to be poor. But how do you judge the quality of their work?

I would like to think that the best quality IP work comes from smaller boutique firms and even solo patent attorneys who spent time in the trenches of larger law firms – and had demanding, sophisticated clients at some point in their journey.

Smaller law firms tend to focus on maintaining good relationships with a handful of good clients. They are not the mills churning out thousands of patent applications, but can take the time to understand the business.

Is it best to pay hourly or fixed fee?

The hourly vs fixed fee debate is eternal. The problem with both options is that they are binary. I can always tell a patent application written by an hourly patent attorney because of the obnoxious length. But, fixed fee patent attorneys can be ridiculously narrow and write terribly short patent applications that do not have enough meat for continuation applications.

There is no happy medium.

The best way to deal with outside counsel is to have someone on the inside that has lived the life and knows the tricks. You need an inside manager who has experience in writing, prosecuting, litigating, licensing, and selling patents. This inside expert can tell when the outside counsel’s suggestions are self-serving or in the best interest of the company. The inside expert will know about the huge, unmentioned conflict of interest between the patent attorney and the client, and they will have to navigate it.