Tonight I had dinner with a patent attorney friend of mine who I have known for more than 10 years. For the purposes of this post, let's call her "Sue." Sue and I met as young patent attorneys at an intellectual property law firm and grew up together to become partners there. Unlike myself, however, Sue has remained in the law firm environment. These days, she works at a highly prestigious national law firm and has a billable rate of close to $600 an hour. Of course, at this rate, Sue's clients expect to obtain quality representation and, having been a client of hers when I was an in-house corporate attorney, I know that my friend is a great patent attorney and gives excellent service. As an IP Business Strategist and Consultant, I am no longer engaged on a daily basis in working with clients to obtain patents. In this IP
If You Have to Ask Your Patent Attorney What Your Company’s Patent Strategy Is, You Don’t Have One
Only You Can Prevent Patent Expertise Creep: Recognizing the Proper Role of Your Patent Attorneys
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
Don’t Destroy Your Corporate Asset Value by Outsourcing Responsibility for Managing Your Patent Strategy to Your Attorney
Even though you are a strategic and savvy businessperson, you may not be feel entirely comfortable with the substance and value of your company’s patent portfolio. In the face of this, you may believe that it is better to cede management of your company’s patent strategy to your patent attorneys. You may make this decision even when you would not consider outsourcing management of any other type of valuable corporate asset. Indeed, you likely would not give a moment’s thought to handing off management of any of your company’s valuable assets to a non-businessperson. For example, would you put your attorneys in charge of maximizing the payback of your innovation product pipeline or your business’ account receivables? Of course not. As an IP Strategist and owner of an IP Strategy and consulting company, I can guarantee you that, if your company owns one or more patents that prevent others from knocking