From patent or trademark attorneys, to patent agents, to IP strategists, there is a lot of professional help available for founders looking to protect their innovations. But each of these professionals provide slightly different types of services, and in different ways.
We believe that the handling of intellectual property matters is more of an art than a science, requiring a broad perspective around the invention and the business/technology/legal environment around the invention in order to create the most valuable IP asset possible. Not every IP professional is an artisan, so how do you find one that can provide the services you want?
What type of IP help do you need?
Your specific needs regarding IP will have a bearing on the IP professional you choose. For instance, a patent/trademark attorney or a patent agent may be appropriate for tasks such as patent and trademark application filing and prosecution, as well as IP training and formal legal opinion drafting, but other tasks may be more efficiently and comprehensively (and for less cost) by an IP strategist with specific experience and skill set than by a patent attorney or patent agent. This includes things such as patent landscaping, patent portfolio evaluation, IP due diligence and other process and strategy work.
Certain other projects may need the additional expertise of other professionals, such as a financial analyst with valuation experience or a technical expert, including IP valuation, IP sales/brokerage, reverse-engineering and technical infringement analysis, and expert witness analysis.
Most times, an IP strategist or patent/trademark attorney or patent agent would be able to recommend the appropriate professionals to help you with such tasks as well as to review any work product generated by these experts.
Why are you seeking patent assistance?
Your selection of legal assistance should take into consideration your motivation for the search as well as the amount of legal help you want to use. Are you planning to DIY as much as you can, rely completely on a law firm, or a combination of both?
In general, an IP strategist, independent patent agent, or a smaller law firm is more likely to be amenable to DIY or partial-DIY approaches, which can help you control costs more than fully relying on the services of a law firm. Other times, your investors or another influencer may insist on you engaging a high profile, tier 1 law firm. If you’ve recently partnered with a prominent VC, this may be an acceptable option, costs be damned. If you have a potential IP infringement issue at hand, then you will need a seasoned law firm to have your back, although the initial analysis can certainly be performed by an experienced IP strategist or patent agent.
More proactive projects, such as product planning and corporate IP strategies are often best performed by an IP strategist with more business and technology experience than a “straight out of law school” patent attorney.
What’s the timeline for your patent?
How quickly do you need to engage legal help? Do you have an acute, immediate need, such as if you’ve been served with a lawsuit or received a notice letter regarding potential patent infringement? Do you have a known, upcoming deadline, such as a statutory bar date or an expiration date for a provisional patent application? Or is your need more long term, such as strategic planning for a VC round, product development roadmap, or internal IP process evaluation?
Just as you would go directly to the ER if you’re having a heart attack, go straight to a reputable law firm if you are getting sued. You need an attorney who can represent you in court.
If your time requirement involves patent office filings or larger strategic matters, an IP strategist will likely be able to provide you with a broader perspective that will be beneficial for you in the long run. Whereas the knee-jerk reaction of a patent attorney or patent agent, when approached with an innovative idea, may be to prepare a patent application, an IP strategist can first evaluate what type of IP protection, if any, makes the most sense when considered within the larger context of your overall business.
While patent attorneys and patent agents may be able to provide similar analysis, they are not always incentivized to do so because of the way most law firms operate. An IP strategist can usually create a work product (e.g., patent application or IP strategy analysis) that takes into consideration your overall organization’s goals.
Where are you located?
If you’d prefer to have face-to-face interactions with your IP professional, then you’ll naturally want to choose a person who works near you. However, the reality is that much of what an IP professional does can be done anywhere. Other than key interactions, such as initial invention disclosure meetings and perhaps settlement discussions, much of the work involving IP creation and management can be performed remotely.
If you find an IP professional with the appropriate legal and technical expertise, location should not be much of a factor. Additionally, in these COVID times, active collaboration by video, phone, email, and other collaboration tools is the new normal for IP projects. Even patent offices worldwide have adopted various forms of electronic filing, record management, and video conferencing. Plus, would you want to work with an IP professional that is not technically savvy?
At Patents Integrated we are patent agents who help businesses make the most of their IP. Contact us today to get started.