Nearly all applicants pursuing international patent protection are aware of the importance of choosing a competent foreign agent, but often do not know exactly what factors to look for when selecting one.
Some applicants simply rely on the network of agents currently retained by their domestic counsel. However, this strategy can be hit-or-miss and is often as much based on indirect benefits to the domestic law firm (e.g. reciprocity) as on what’s best for the applicant.
Based on my experience, here are some of the criteria I believe applicants should look for in choosing or evaluating their foreign agents.
• Ability to communicate effectively in English. Patent law is complicated enough. No need to make things worse by speaking with someone less than proficient in English.
• Experience in a broad range of industrial fields. You certainly don’t want someone with an electrical engineering background prosecuting your pharmaceutical application.
• Ability to forward communications from their local patent office to the client in a timely manner, and diarize any deadlines. Few things frustrate patent attorneys more than receiving a foreign office action, and finding that the first month out of a 4-month period for response has already lapsed.
• Expert translations of foreign documents into English. Incoherent translations require a call to the foreign agent for clarification. And then you’re likely to run into the problem discussed in the first bullet point.
• Ability to receive instructions and lodge a response in accordance with those instructions. Applicants need to make sure foreign agents understand their prosecution strategy and follow it.
• Ability to advise on any idiosyncrasies of the local jurisdiction. Many U.S. practitioners are unaware of the nuances of patent law in foreign jurisdictions. A good foreign agent will modify applicant’s instructions so they make sense in their local patent office.
These certainly are not the only factors one should look at when searching for an agent to represent their invention in a foreign jurisdiction. However, we’ve found that those agents who do satisfy all these criteria contribute immensely in minimizing any potential snags that may pop up during prosecution.
Separately, see this older post for tips to minimize costs when instructing patent attorneys.