Confessions of a "Recovering Patent Attorney" and Why I Have Joined the Growing Ranks of IP Strategists

Confessions of a Recover IP Lawyer

Confessions of a Recover IP Lawyer

I often facetiously refer to myself as a “recovering patent attorney.” This somewhat tongue-in-cheek phrase seems appropriate to my present professional state of mind because, after many years of drafting and prosecuting patents for clients of all sizes and degrees of sophistication, in the end, I became disillusioned with the way the patent business traditionally operates.

Too often, I found that the patents I worked so hard (and was paid handsomely) to obtain failed to serve my client’s business needs. In searching for the source of the disconnect between my efforts, the client’s expenditures and the ultimate value of the patent to my client’s business, I realized that those responsible for the client’s business often did not participate adequately in the patenting process. Instead, at many organizations, inventors and patent attorneys served as the gatekeepers for most patent decisions. While the relevant client business unit typically held some say in patenting decisions, at many companies, the process effectively operated within a R&D/patent attorney “silo.”

Upon reflection, I found this situation akin to the proverbial “fox guarding the hen house” because those with the most riding on the patenting process i.e., R & D managers and patent attorneys, held de facto decision rights as to their company’s patents. Patent decision-making at many corporations seemed therefore to often rest on the perceived scientific value of the invention covered by the patent, not whether a patent for that invention served to effectively execute on the client’s business strategy. In short, many patents that I obtained covered cool ideas, but were nonetheless effectively worthless to serve the client’s business needs.

Unlike many who become disillusioned with their professions, I chose not to leave the patent business but, rather, to try to change the system from within. To this end, I joined the growing ranks of patent and intellectual property professionals who refer to themselves as “IP Strategists.” In such a role, I now work closely with business and innovation managers to ensure that corporate patent decisions are based on whether a patent supports the business first, irrespective of how revolutionary the underlying invention might appear.

In contrast a traditional patent attorney role, an IP Strategist focuses not on the patentability of the invention and in reaching a successful endpoint to the patenting process. An IP Strategist instead focuses first on the business goals of the client. In this framework, if a patent indeed supports the client’s business goals, the IP Strategist will work with them to effect cost appropriate patent protection. But, if a patent will not align with their articulated business strategy, the IP Strategist will recommend that the client pass on filing for protection, even if the issued patent would protect a “game-changing invention.” Put simply, a game-changing invention that is not in alignment with the client’s business results in a client wasting resources for a game in which the client does not play. Logic then dictates that the client has no business spending money to protect that invention.

When put in these terms, my clients quickly recognize that their organization likely wastes considerable corporate resources obtaining patents that do not ultimately provide payback to their business. Their decision to hire an IP Strategist therefore almost immediately results in cost savings typically far exceeding the modest cost of hiring someone like myself. Moreover, by making the threshhold question in patenting “how would patenting this invention support our business strategy?,” as opposed to “is this invention patentable?,” clients also quickly recognize that spending a bit on strategic patent planning better ensures maximum overall protection for their company’s products and technology.

Please note that I do not wish to be seen as being critical of my patent attorney colleagues. I have the utmost respect for these highly trained professionals who work hard to obtain patents for their clients. Indeed, until recently, I made my living as a patent attorney and I still count a number of patent attorneys as among my closest friends. Nonetheless, a patent attorney’s job is not to provide business advice to their clients. Rather, as a specialist operating in a complex business environment, and once the client directs them to move forward with obtaining a patent, a patent attorney must keep her eye on the patenting process. It is the client’s role to provide business direction to their patent legal specialists, not the other way around.

By way of logistics, as an IP Strategist, I work with my corporate clients before the process gets under way to validate the business appropriateness of their organization’s patenting decisions. Patent attorneys then handle the day-to-day process of preparing and prosecuting their clients’ patents. My role does not end there, however. Because my clients’ business strategy changes from time-to-time, I will also provide periodic oversight of ongoing patenting effects to confirm continued alignment of the patent attorney’s activities with the current business strategy of my clients.

Admittedly, we IP Strategists are a new breed of patent professionals. But, many of us are blogging and speaking about our speciality and, fortunately, most of us do not appear shy about talking about the changes we believe needed to the patenting process at many organizations. As a result, I predict that IP Strategists will emerge as a critical first stop for forward-thinking corporations that seek to maximize the value obtained from their patents.

6 thoughts on “Confessions of a "Recovering Patent Attorney" and Why I Have Joined the Growing Ranks of IP Strategists

  1. Clark.Wilson.IP.Atty

    I like this new way of thinking. Simply creating a briar patch of patents is expensive and disorganized. I am interested to see the growth of this new mantra and hopefully a rise in such a profession.

  2. Sanjay

    Jackie is absolutely correct. As a former in-house patent attorney for one of the world’s largest food companies, the client is the business unit that needs a product going to market protected. Alternatively, if you are in a university or a sole inventor, one may want a revenue stream from a license. The patent strategy must incorporate the client’s business needs!

  3. robert

    Dear Jackie,

    As Patent Scientist IP strategy sounds more familiar then IP Law.

    How was your transition state from IP Lawer to IP Strategist ? Could you give me any advice, recommend any book ? I am doing MBA because I believe it will help to reach my goal to be a IP Strategist, ou Innovation Strategist, or CIPO or simply be “the one that turns patents to business strategy”

    Best regards

    Robert Woolley

  4. Jackie Hutter, Intellectual Property and Patent Business Strategist and "Recovering Patent Lawyer"

    Hi Robert, please feel free to contact me directly at jackiehutter@gmail.com

  5. Scott

    Jackie, I finally had a moment to comment. As we have discussed in the past I too struggle with this dilemma each day. Since I started working at my present employer, I have been preaching this very same mantra. When I discuss aligning patent filing strategy to the long term corporate objectives I see the nods of approval throughout the room. The disconnect seems to be that the business leaders do not think in these terms so they quickly forget and fall back into old habits. Great idea…let’s patent it.

    At present I am culling the portfolio. In many instances (1) applications were filed that should never have been due to lack of patent subject matter (USC §101), (2) there was and is no business interest (but it was a good idea), and (3) once foreign filed examination was never requested. This culling has been a source of distaste and has caused a rumbling of questions such as “Why do we patent anything if you are just going to drop it?”, “How come we can’t stop X from making a competing product? I thought we patented that doo-hickey.” Since I began I would like to think that the quality of patent applications filed has not only been broadened and strengthened, but is much better aligned to the current and future business strategy of my employer.

    The issues faced by many of us are that the patent portfolios we are dealt are filled with imperfect applications filed with little or no business strategy; management has difficulty envisioning the shift from patents being a cost of doing business to a strategy for creating value, and we typically are part of a legal team rather than a business or monetization team.

    It will take some time to make these changes, but our voices will strengthen as our numbers grow and as the positive results begin to accumulate.

  6. Paul Cole

    Any attorney who does not focus on the client’s business needs is simply not doing his or her job. That has been true for at least the last 30 years, in Europe as in the US.

    But the client’s interests are not simply in saving money. They are wise use of resources to safeguard commercial interests. For example consider an invention in a university or start-up. It is foreseeable that the patent will go through due dilligence. Patent quality if not a deal breaker may significantly affect outcome, e.g. the royalty rate achievable. To withstand this scrutiny a high quality document is needed. So putting a low ceiling on the costs of the patents draftsman could be a self-defeating course of action.

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