During my 8+ years in corporate intellectual property practice, I spent a lot of time managing patent portfolios. At my last job, the portfolio was built by merger and acquisition. As a result, I inherited hundreds of patents covering thousands of products across quite a few companies on several continents. I also inherited a lot of outside law firms. As I began to organize the portfolio, I started to sort through the outside attorneys, and what I found was downright disturbing, both from an in-house/management perspective and from the law firm end of things.
I’ll start with what I learned from the law firms. Basically, there are two types of patent attorneys. There are those that simply draft and prosecute patent applications (hereinafter “Patent Prosecutors”). Patent Prosecutors tend to take a narrow view on patents. They take one patent at a time, maybe a small group, focusing on the technology. They have hours to bill, and fill their time drafting patents, responding to office actions, and writing opinions. It’s actually I’ll actually go so far as to say it’s a business model at most IP firms.
The second type of patent attorney also drafts and prosecutes patent applications, but they bring something extra to the table. They provide their clients with advice (hereinafter “Patent Counselor”). Good Patent Counselors advise their client on the business of intellectual property. Patent Counselors bring value to their clients by seeing the big picture. They understand their clients’ business, their strategy, and their objectives. They assist the in-house patent practice by making sure that the legal work is aligned with the business strategy and goals of the organization to maximize the value of the patents. Based on my experience, only a select few Patent Prosecutors make good Patent Counselors.
So, why isn’t the typical Patent Prosecutor a good Patent Counselor? It’s all about the training. Lawyers are trained to be advisors (at least that’s what we’re told in law school). Unfortunately, once Patent Prosecutors reach a law firm, they are taught to draft and prosecute patent applications, and very little focus is on advising the client beyond that which is necessary for the relevant patent prosecution. In fact, many of them are poor business advisors. And here’s the thing, companies can hire a good patent agent to merely prosecute patents. Companies hire patent attorneys for advice of counsel.
To go one step further, Patent Prosecutors and Patent Counselors approach their work with very different end products in mind. Patent Prosecutors are trained to answer the question “Can I get a patent on this?” Their focus is on the technology and just getting a patent granted is enough for success. (To be quite fair, it’s enough of a success for most patent owners as well because they are the ones asking “can I?”.) On the other hand, Patent Counselors are interested in whether their client should get a patent on “this”. Their focus is on the patent as a business asset. They know that getting a patent on “this” fits with their clients overall portfolio and meets the company’s business needs. How do they know? They ask questions that go beyond the basic technology discussion.
As in-house counsel, I sought what I thought was reasonable and practical business advice and found it difficult to find. In fact, I found that most Patent Prosecutors think they are good Patent Counselors, when in fact they can offer little but high priced patent prosecution. It actually took me a couple of years to build a very small network of trusted advisors. Three attorneys made the cut. These attorneys knew and cared enough about my business needs that they could give me advice when and where it was needed. They looked beyond the technology to the company as a whole. They asked questions about the business and the market. The patents they produced reflected the answers.
A good relationship with outside counsel is essential for IP success for most companies. It is especially important for companies that do not have in-house attorneys. They rely heavily on advice from outside counsel. Patent Prosecutors need to expand their point of view to include the big picture, and be able to engage their clients as trusted business advisors. They should keep in mind that a company’s technology is not invented in the abstract. It’s going into a product, and there’s a lot that goes into making a successful product. If you are a patent attorney, ask yourself which category you fit into. Be honest. How well do you know your client’s business? Do you ask questions that go beyond the “can I” discussion? If you are the client of a patent attorney, I’ll deal with you in my next blog post.