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IP, Patent

IP Strategists, Huh? What Are They Good For? Useful Tips To Avoid Fattening Up Your Patent Counsel

Over at Jane Lambert’s NIPC Law blog, a recent post about IP strategists quotes from Jackie Hutter’s earlier post about what it means to be an IP strategist:

An IP Strategist does not advise you to spend your money on obtaining IP because you can, but because you need to.

Lambert explains that strategists are in a unique position to offer objective advice, since their business is the strategy itself, not the implementation of it:

As we do not apply for patents, trade marks or registered designs we can give completely disinterested advice on the optimum intellectual property package.

Thus, a strategist is not “one stop shopping,” and will require the client to have further access to specialists with relevant experience (such as patent agents, litigators and licensing counsel) in order to execute the strategy.  As a result, strategists are often seen as unnecessary, or expensive “middlemen” (or women, as the case may be) that add unneeded complexity to a situation. Naturally, this type of discussion catches my attention.  In addition, patent specialists tend to view such advice as an affront to their integrity or ability to do a job.

Indeed, a contrarian suggests in the comments that patent agents, for example, are better suited than strategists to provide strategic advice:

Maybe, just maybe, they are able to give the best advice because they understand the whole process from beginning to end?

But isn’t that exactly the point? Just in the field of patents, there are individuals who specialize in every aspect from conduct prior art searches, preparing and filing applications, litigating patent infringement, and licensing patents.  The comment mentioned above goes on to mention the need to know and understand scientific principles, legal principles, as well as staying current with developing law from a variety of courts.  If ever there were a case for specialization, this is it.

Let’s examine just two of the many specialists in the patent space: patent agents (a term I’m using here to distinguish from the more general patent attorney to refer specifically to those whose are primarily responsible for preparing and filing applications), and patent litigators (whose role it is to either manage, or stand up in front of a jury, to pursue their client’s patent rights).

Patent agents are primarily trained to write claims and negotiate (i.e. argue) with the patent office over what is or isn’t unique enough to be patented. Primarily they specialize in getting your application approved, not with whether your patent will actually be useful. Between arcane procedural rules, an examiner’s sometimes “quirky” behavior, and the overall desire to “deliver” a finished product (i.e. a patent) to a client, patent agents tend to seek an allowable patent by any means necessary. After all, if an agent recommends that a client abandon their patenting efforts because any obtained patent would be useless, the client would likely want to press-on nevertheless, but regret it later.  (A previous Lambert post cites a perfect example.) Knowing this, the patent agent presses on, perhaps without consultation. Upon seeing an open door to allowance, the agent seizes on it.

In a relatively dastardly example, consider the use of the “consisting of” preamble. I have seen this used more than once to overcome an argument that a particular collection of claimed elements is clearly shown in a prior art reference. Of course, that prior art reference might be for a different purpose or otherwise consider additional features immaterial to the client’s invention. So, the logic goes, by restricting the scope of the invention to only the elements of the claim, the Examiner may be persuaded to allow the application. From the client’s perspective, unfortunately, this patent is worthless (mostly because it is the easiest type of claim to design around). Only agents employing this strategy will tell you differently. Why do agents accept such patents? Because if you tried to sue them, they could always point at it and say, “See? We got something allowed! Not our fault.”

Patent litigators are primarily trained to either manage or try infringement cases, depending on their background and experience. Actual “stand up” courtroom work is typically done by a pure litigator, although many patent attorneys have successfully made the transition. Management of infringement cases involves experience in managing personnel, resources and information so that the infringement investigation (discovery) is carried out to properly identify proof of infringement. Like the patent agent, this lawyer is more focused on completing a specific task than deciding whether pursuing the investigation is in your best interests.

Again, the litigator also has good reason, as any failure to zealously and aggressively pursue your case could be used later to show malpractice. Thus, the typical instinct to “cover all bases” results in a scorched earth approach to litigation that magnifies costs and turns an infringement lawsuit into a runaway truck.

These specialists are trained to pursue these narrow goals and accomplish specific tasks as zealously as possible, not as cost-effectively as possible. Here is where the value of a strategist comes into play. They understand the motives of the specialists (which, by the way, are not necessarily sinister) as well as the risks and rewards in play. The patent agent would say, “We can get a patent allowed.” The client would, naturally, believe that getting the patent is the right strategy. But the strategist would know if the patent served any real purpose, the ease at which it could be avoided by copycats, the cost of maintaining the patent through its term, and the relative likelihood of enforcement. True, the patent agent might tell you these things as well, but only if you ask the right questions.

Beyond this, a strategist might also be able to come up with a plan for the IP that you decide not to pursue, through other specialists with knowledge of licensing, monetization or tax strategies designed to maximize whatever value the IP might hold.

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Discussion

6 thoughts on “IP Strategists, Huh? What Are They Good For? Useful Tips To Avoid Fattening Up Your Patent Counsel

  1. Thanks for the shout out, Patrick. A couple of things to add:

    I often explain IP strategy using the analogy of medicine. People do not understand that if you go directly to a patent attorney (or agent or litigator), you have effectively pre-determined the outcome. In other words, you have diagnosed your own illness and started down a treatment path that may be technically correct, but it may not be the best result. Say you have a chest pain and diagnose yourself with a heart condition. If you go to see a cardiologist, she could very well say “you need surgery.” But if you went to an internist first, or even a general practitioner, they might say “lose 20 pounds, exercise and cut down on the salt.” The second route seems more risky, and it does not seem like you’re really treating the problem for which you came into see the doctor, but it may be the right medical approach for you. But, importantly, if the cardiologist was to recommend the second approach, they wouldn’t make as much money from you. In other words, she doesn’t get paid for saying no. There is likely nothing unethical with choosing the more aggressive treatment, but it may not serve your best interests in the long run because you weren’t taking care of yourself and you would be in much better shape if you did.

    As an IP strategist, my goal is to do what’s best for the “patient,” irrespective of the number of “procedures” I undertake, such as hours billed or number of patents written. I also do not write patents anymore; instead, I farm these out to people I trust, and who I would hire to do my own work. So, in the aggregate, an IP strategist like me can actually SAVE money for clients because I know how to select quality patent people at a great value, and I know how to have the hard conversations with them about budgeting and cost. For client to hire me requires that they understand that I create value just be being there for them on an ongoing basis, which is a new conversation to have in the legal world where everything is done on a billable unit basis. But with 90 % or more of patents ending up being no more than worthless pieces of paper, there is clearly a need for a more open and substantive dialogue regarding IP.

    Posted by Jackie Hutter | January 11, 2011, 9:43 am
    • Great analogy. For the cardiologist, there’s also greater risk to advocating the second approach. If you drop dead a week later of a massive heart attack, the family will most likely come back and say, “You’re a cardiologist! You should have operated!”

      Its the same with a patent attorney (though not as dramatic). They’re expected to tell you to file a patent, so they will err on the side of filing a patent. If they’re right, great! If they’re wrong, there’s no harm done (from their point of view).

      Posted by Patrick | January 11, 2011, 9:57 am
  2. Dear Patrick, Great article. thanks, sami

    Posted by ATIG | January 12, 2011, 7:56 pm
  3. I’m missing something here. What qualifications have IP strategists got? Scratch that query. The answer is none. FrankD1947@gmal.com

    Posted by Frank | September 12, 2012, 1:32 pm

Trackbacks/Pingbacks

  1. Pingback: Don’t File A Patent: A Reprise–Who Needs It? « Gametime IP - January 18, 2011

  2. Pingback: Read This to Become a Better Patent Attorney or Agent (Crosspost from GameTime IP Blog) – IP Asset Maximizer Blog - January 18, 2011

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