As an IP strategist and consultant (more info here: www.jackiehutter.com), I have seen many companies facilitate this expertise creep of their in-house or outside patent attorneys. Patents are arcane, and it may seem to make sense to allow a legitimate patent expert handle something that “looks and smells” like a patent. But, there are significant and critical distinctions between patent procurement and patent strategy.
These distinctions can be compared the differences in the expertise types of an optometrist and an opthamologist. Both of these learned professions involve treatment of the eye, but each of these doctors treat very different aspects of the eye. An opthamologist will be able to treat diseases of the eye, but if you need vision correction, you are wasting your money (and probably a lot of it) if you are asking your opthamologist to recommend prescription lenses for you. And at the end of the process, it is questionable that you will see clearly because most opthamologists are not trained in optometry.
Of course, most people know better than to ask their opthamologist to prescribe them glasses. In any case, the opthamologist certainly will tell the patient that their vision correction concerns are best addressed by an optometrist. This clear separation of responsibilities is a result of the established nature of treatment of the eye. Over the years, each of these medical specialties has emerged and each has evolved into distinct areas of practice.
In contrast, patent strategy has emerged as an area of business focus only in the past few years. Accordingly, there has not been enough time for a generally recognized distinction to have arisen between the practice of obtaining patents and the practice of aligning patents with business strategy. As more business leaders begin to understand the distinction between these two efforts, it will become less common for companies to assume that patent attorneys should be consulted regarding patent business questions. However, for the immediate future, I believe that it will be common for many patent attorneys to improperly profer business strategy advice to their clients when they should instead be truthful to the client and admit that business advice is not within their area of expertise. Unfortunately, many patent attorneys are unenthusiastic about making such admissions to their clients.
It is then up to you as a business leader to serve as the gatekeeper for your company’s patent strategy and patent issues to ensure that your patent attorney does not become the sole purveyor of these two very different types of patent expertise. In short, only you can prevent patent expertise creep.