Patent costs often represent a significant part of the operating budget of a startup or midsized technology company. After many desperate conversations with colleagues experiencing patent angst, I thought a post on selecting a patent counsel might be helpful to Patent FindS readers.
Just like many things in life, the source of angst over patent issues is often the result of poor communication and unmanaged expectations between the client and their patent counsel. These issues can be addressed by:
-- finding the appropriate patent counsel,
--incorporating your considering your business goals into your IP strategy
--setting an IP budget.
Because patent filings and other intellectual property are critical to a company, the process of finding an attorney seems challenging for many and down right scary for the rest of us. There are several articles on the Internet that provide advice (sometimes good advice) on choosing a patent counsel. This blog post specifically identifies areas that I have found to be very important in the attorney selection process for my clients, which include entrepreneurs, startup and midsize companies and research foundations.
Here we go:
Begin your search for a patent counsel by asking your colleagues or investors for a referral.
Although your colleagues may look for different qualities in an attorney, it is likely that their recommendation signals either good communication skills or an excellent knowledge of patent law.
Consider law firm size when identifying two or three attorney candidates.
1. Solo or small group IP practice (1-5 attorneys)
Over the last several years, technology centers have observed a growing number of patent attorneys leaving large law firms to open solo or small group practices. These "boutique" patent firms typically have reduced billing rates, allowing companies to file their early patent applications at a lower cost. In many small firms, the client works directly with the senior partner. When interviewing a smaller firm, it is important to determine their experience in your technical field.
2. Large patent firm (more than attorneys) or a large general practice law firm with IP division
Larger patent firms focus on having a group of patent attorneys and scientific advisors with relevant experience in a number of technical areas. You will likely find a patent attorney familiar in your technical field. The large firms also have access a large network of attorneys and often have experience in alternative patent strategies (e.g. accelerated examination), patent licensing and litigation. During your initial client meeting, you will meet with a partner or senior associate. Typically less experienced associate will draft the patent applications or patent office responses under the partner's direction. The larger firms usually bring a larger price tag which requires internal management to keep the costs low. Investors sometimes prefer that their portfolio companies the use of a large, well-known law firms.
Attorney with or without Ph.D
In my opinion, the scale tips towards selecting attorneys based on their experience prosecuting patent filings in your field of interest rather than their graduate degree. In addition to their law degree and patent bar certification, patent attorneys generally have an undergraduate or graduate degree in a technical field (e.g. chemistry, engineering, etc.). An attorney should also have access to technical experts. This expertise can reside with scientific analysts or other attorneys.
Set up a face to face interview
1. Ask to meet the team who will be assigned to your patent docket. Listen to the introductions, the team should include the partner or senior associate, key associates and if necessary, a scientific analyst.
2. Determine who will be working on your case. Will the partner at the meeting oversee the work of others? Are you meeting the attorney actually writing new applications or patent office responses? What is their experience in your technical field? Who will work with you to set and maintain the patent strategy?
3. Be prepared to simply explain your primary invention and why a patent is important to your business plan. Explain how your device, compound or platform technology will be commercialized. Bring a list of your competitors.
4. Evaluate the team's working knowledge of your field of interest. Does the team ask good questions? Do they seem to understand your explanation of the invention?
5. Trust your instincts. Do you like the legal team and do you feel comfortable asking questions? Or does team use legal jargon and just speak to each other during the meeting? Does the team seem realistic and optimistic or do they start the conversation by complaining about the United States patent office rules?
6. Ask for references. Most importantly, call the references before making a decision.
Do not leave your attorney meeting without discussing budget. Ask the attorneys to take a look at your current patent portfolio and estimate their fees and expenses for the next year and for drafting a new patent application. While fees for drafting applications or responding to office actions vary according to the invention and the complexity, the law firm should be able to provide you with a range of fees and expenses. If they can not estimate costs at the meeting, followup the next day by email or with a telephone call.
Business and regulatory experience
Evaluate the legal team's experience at aligning IP with the company’s business plan or regulatory strategy. I have used very good patent attorneys who deferred to other experts to assist in developing business and regulatory strategies. That can work, as long as this expertise is included in the patent strategy. Again, trust your instincts.
Heads up: Investor opinion
Occasionally, investors will have"strong" opinions on which law firm their investment uses for patent prosecution.