This article is part of the “What Should I Do (WSID)?” series where I discuss various scenarios involving intellectual property and business. Topic suggestions are always welcome.
“I’d like to find an IP professional who can help me — What should I do?”
Too frequently in business matters, IP issues can make or break a situation. IP asset creation and management is an investment, and the selection of the right IP professional is crucial.
I assume you’ve considered your IP endgame, and have come to the conclusion that you want to seek professional assistance. Great. I 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? Here are the suggested 4Ws and 1H involved in selecting an IP professional that is right for you.
Who: Types of IP Professionals
There are three main categories of IP professionals: 1) Patent or trademark attorney; 2) Patent agent; and 3) IP strategist. Each of these professionals provide slightly different types of services, so let’s consider each type.
- Patent/Trademark Attorney
An attorney is a person who has obtained a Juris Doctor from an accredited law school and has passed the bar exam for the state(s) in which they practice law. Having these qualifications allows the attorney to represent clients in front of the courts for which they are admitted.
Additionally, to be able to represent clients in front of the IP examining bodies of specific countries, they must pass a registration exam for those countries. For example, in the US, you must pass the USPTO Registration Examination to become a registered patent practitioner in order to practice before the USPTO. One requirement of eligibility for the USPTO exam is to have a scientific or technical degree, so the assumption is that the registered patent practitioner is able to understand highly complex technologies that become the basis of new inventions.
Within the patent/trademark attorney category, there are two types of specialties: 1) Prosecution (i.e., negotiating patent or trademark applications with examiners at patent offices on behalf of clients); and 2) Litigation (i.e., enforcing clients’ IP rights or defending clients in IP-related legal actions). In most cases, a prosecution specialist may not be skilled in IP litigation, and vice versa. Oftentimes, patent/trademark attorneys are also knowledgeable about copyright law and trade secret law, as copyright and trade secret protection are sometimes appropriate alternatives to patent or trademark protection.
- Patent Agent
In the US, a patent agent is someone with a technical background and has passed the USPTO Registration Examination. A registered US patent agent can represent clients before the USPTO, like a patent/trademark attorney. However, unlike an attorney, a patent agent cannot represent clients before the court system.
The nomenclature can be a bit confusing in countries outside of the US. For example, a person who has passed the European Qualifying Examination is called a European patent attorney, regardless of whether the person has a law degree.
While a patent agent may only represent clients before the patent office, patent agents often have stronger technical qualifications than patent attorneys, as many people who choose to become patent agents have more hands-on work experience in scientific research or technology development and have obtained advanced degrees in their technical fields. Patent agents may also provide better value for clients due to their (normally) lower billing rates compared to patent/trademark attorneys.
- IP Strategist
A recent trend in the IP profession is the emergence of IP strategists, who often provide a broader perspective over the entire innovation lifecycle. Many IP strategists have experience in a variety of aspects of IP asset management and monetization, such as patent prosecution at law firms, IP strategy development within companies, negotiation of IP assets with third parties, and patent litigation. Some IP strategists also have strong technical backgrounds including product development experience, and some even have entrepreneurial experience as a founder or an early startup employee.
While IP strategists are often highly experienced patent prosecutors/litigators, they can provide services beyond those offered by patent/trademark attorneys and patent agents, as they are able to consider your innovation as part of your overall business and technology development strategies. Whereas patent attorneys and patent agents focus mainly on specific innovations or on a particular IP asset for enforcement, for example, IP strategists look at how IP can benefit the asset owner in a larger context, beyond the attainment of an issued patent.
What: Your Needs
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/trademark/copyright application filing and prosecution
- IP education for you and/or your employees
- Formal legal opinion drafting (e.g., validity, infringement, freedom to operate)
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:
- Patent landscaping
- Patent portfolio evaluation
- IP due diligence
- Corporate IP process development
- Long- and short-term IP strategy development
Certain other projects may need the additional expertise of other professionals, such as a financial analyst with valuation experience or a technical expert. Some examples off such projects are:
- IP valuation
- IP sales/brokerage
- Reverse-engineering and technical infringement analysis
- 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: Your Motivation
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. Here are some factors:
- Are you planning to DIY as much as you can, rely completely on law firm, or combination of both?
- Is your need for legal assistance self-recognized or externally imposed? (e.g., getting IP help is part of your overall business plan, or you are being told by your investors/advisors to get legal help).
- You have been threatened with a law suit, or someone has accused you of infringing on their IP.
- You think someone might be copying your product without your permission.
- You want to launch a new product or product line.
- You want to talk with an expert about making sure your own IP assets are being adequately protected.
In general, an IP strategist, independent patent agent, or a smaller law firm are 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.
When: Your Timeline
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 law suit 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 work product (e.g., patent application or IP strategy analysis) that takes into consideration your overall organization’s goals.
Where: Your interaction preference
This factor is usually purely a matter of personal preference. 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.
The reality is that much of what an IP professional does can be done pretty much 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. Personally, I’ve worked on IP projects with professionals and clients whom I never did meet in person, although we actively collaborated by phone, email, and other communication tools.
How: Selecting your IP professional
So how do you go about selecting the person that is right for you? In the US and EPO, the individuals who are qualified to represent clients for patent matters can be found through the USPTO and EPO databases, respectively. Here are some specific factors to consider as you go through your selection process:
- Recommendation from others
Recommendations from people you trust and, ideally, work in a similar space as you would be most relevant. You’ll likely be able to get a feel for the reputations of different professionals, such as some that are known to be highly aggressive in their approaches to those who are more conservative. Be sure to consider the recommended professional’s technical and legal experience to make sure he/she would be able to give you advice specific to your situation.
One possible problem with taking recommendations from others in your technology area is that their professional may be unable to represent you because of conflicts of interest. Usually, the professional should be able to give you recommendations for others with similar skills that may be able to work with you instead.
- Individual/firm operational style
Depending on your specific situation, you may want to have the backing of a large law firm with famous partners and lots of associates. Such firms may have the added benefit of scaring away potential rivals simply by firm reputation. Also, if you will be going head-to-head with large companies, then you may need the resources that are only available from large law firms. A drawback of large Tier 1 law firms is that such firms often come with high price tags. Also, often times, while you may interface with the high profile partners, the work product you actually get may be produced by lower level associates. Always ask exactly who will be working on your matter and how the work product will be managed.
If you want more direct access to the braintrust of a firm, then a smaller firm or an experienced solo practitioner may be more to your liking. There are several small firms and independent offices, founded by professionals who struck out on their own from Tier 1 firms or corporations, that can provide much better value for your money because they avoid the high overheads of large firms. The professionals at these firms can be highly experienced and have very good reputations in the industry. One problem, of course, is that the amount of work that can be handled by small firms and solo practitioners are limited. Always have an honest discussion about the anticipated workload involved in your matter, and probe whether or not the office can handle the amount of work in a timely manner.
Independent of the size of the firm, you should also see whether the professional would be open to a fixed fee arrangement or a project-based approach rather than an open-ended billable hours plan. Some firms may also be willing to work on contingency, under the right circumstances. Such alternative fee arrangements can allow you to control the incurred costs and to plan for possible overages. Do keep in mind that most professionals will require a retainer for at least a percentage of the anticipated fees.
- Gut feel
Regardless of the reputation or technical prowess, I believe gut feel is still an important factor in selecting an IP professional to work with you. Would you feel comfortable discussing your dreams and aspirations for your products with this person? Do you think this person really gets your technology and your passion behind the technology? Does this person really listen to you, and is honest and genuine in his/her interactions with you? Do you trust this person with possibly your most valuable asset?
Processes involving IP are often time-sensitive, and it’s the IP professional’s responsibility to stay on top of deadlines and to keep you apprised of the activities for which you are paying. It’s essential that you are able to connect and communicate with your IP professional. Like a bad date, slow response times and lack of regular communications are red flags.
I hope you’ll take the above 4Ws and 1H into consideration when you are choosing the IP professional with whom you’d like to work. Best of luck to you in making your decisions and moving forward with your entrepreneurial journey.
About the Author and Disclaimer: Yoriko Morita has worked with innovators in a variety of contexts, in a law firm working for inventors, as in-house IP director, and as a licensing professional. She currently helps clients with such IP-related questions, as well as developing integrated business/technology/patent strategies, through her company, Patents Integrated. The contents of this article are intended to be informational only, not legal advice. The reading of this article does not establish an agent-client privilege between you and Patents Integrated, and Patents Integrated is not responsible for any damages arising from your use of the information in this article under any circumstance. Your use of the information in this article is at your own risk, and you should seek the advice of a licensed legal professional regarding your own specific situation.