Florida Patent Attorney Addresses Adding Value to Patent Applications
In his Intellectual Property Counsel Blog post entitled " A Litmus Test to Identify Exceptional Patent Attorneys ", in-house Florida intellectual property attorney Todd Mayover provides a good overview of things that distinguish a " good patent attorney "from an "exceptional patent attorney ".
In particular, he writes:
Adding value to patents requires a complete understanding of an invention, knowledge of the current state of the field of art, the ability to identify how an invention fits in to the industry or market, and the ability to identify and distinguish the closest competitors.
I could not agree more with this statement but feel the need to question sometimes the way that in-house attorneys make their hiring decisions for patent prosecution work. Many times, outside counsel are chosen on the basis of firm and name partner reputations without any inquiry at all on who will actually be doing the work.
There is nothing wrong with this, of course, as long as the attorney and partners that were responsible for building a law firms reputation are the same ones that will work on your matter. If they are not the ones actually doing the work on a company’s application, however, in-house intellectual property lawyers should question why they are paying for a senior partner’s billing rates when a "wet behind the ears" new associate is actually the one doing the "heavy lifting" on the patent application draft.
Associates at most law firms have no ownership interest in the firm and face an ever-increasing turnover rate. As an in-house intellectual property lawyer, do you really want to continue paying legal fees for a law firm to constantly retrain new associates on the basics of your companies’ industry and technology?
At whose expense is the associate learning about important details of your invention and industry? If it is billable, do you have any assurance that this associate will be available (or even at the same law firm when your next patent matter comes up?)
And more importantly, are you having substantive discussions with the senior partner of the firm or the low level associate that is in the trenches drafting the application?
There are times when speaking to the senior partner make sense on an intellectual property matter (i.e. billing issues, quality of representation concerns, litigation strategy, etc) but important communications about the scope of claims on a patent application and disclosure distinguishing the prior art are best dealt with by the attorney drafting the application.
Guy Kawasaki states on his blog post entitled "Counterpoint: Patents and Defensibility", that:
The bottom line is that if your patent attorney tells you that you must patent everything without regard to the bigger picture, do yourself a favor and find a new one. A good patent attorney looks at the bigger picture and proposes a strategy—not a bunch of disparate tactics.
Regarding a good patent attorney proposing a strategy, keep in mind that the patent attorney "most knowledgeable" in a client’s technology should be the one proposing the strategy–or at least participating in any discussions about it. Many larger firms have "name partners" meeting with clients and developing the strategy and an elaborate hierarchy of overworked (albeit well paid) grunts doing all of the actual patent claim drafting work.
As a former overworked grunt at a large law firm, I know first hand that in-house counsel seldom bother to ask the low level patent associate for his or her thoughts on the filing of a new application. This is a mistake in my view as that is often the attorney in the best position to devise and implement a strategy.