Only You Can Prevent Patent Expertise Creep: Recognizing the Proper Role of Your Patent Attorneys

Understand the limitations of your patent attorney to provide business advice
Understand the limitations of your patent attorney to provide business advice

Your company has a question about your company’s patent portfolio. This is an issue for your company’s in-house or outside patent counsel, right? Maybe not. If the question relates to whether an invention is patentable and whether the patent is likely to grant, a patent attorney is the correct person to contact. But if the question is whether you should obtain a patent on a patentable invention, your company’s patent counsel is quite probably not the correct source of counsel. The latter is a question of patent strategy, which is inherently a business question, not a legal question. However, many businesses assume that when a patent issue comes up, a patent attorney should be contacted because a patent attorney knows about patents.

So why are patent attorneys typically not suited to address patent business questions? As many people know, useful, novel and unobvious inventions are patentable. Significantly, however, there is no legal requirement that an invention have a business purpose in order to be patentable. Indeed, in my prior life as a patent attorney, most of the 100’s of patents that I obtained on behalf of my clients ended up being worthless.

And, truthfully, it did not matter to me whether the invention had a business purpose for my client because as a patent attorney my motivation was purely legal: if the invention was patentable I would do whatever I could to convince the Patent Office that my client deserved a patent. My efforts were typically wholly divorced from any business purpose and, unfortunately, once the patenting process got underway, the process often became an end unto itself. As a result, my clients’ and my focus was on whether the patent would issue, not whether the continued efforts to obtain the patent supported the business needs of the client. Put simply, the job of a patent attorney is to obtain patents on the client’s patentable inventions, not to ensure the patents are a good business decision for the client. The latter issue is a business question, which should be outside the purview of a patent attorney.

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