As a patent attorney who have worked in boutique patent law firms to the largest patent law firms to in-house associate general counsel jobs, I have seen the full range of law firm services from the inside as well as from the client side. If you are considering hiring a patent attorney to represent your interests, you need to make sure that they have your long-term goals in mind. This is because the value of your patent rights depends on the type of company you run and the assets you have. A skilled attorney can help you secure your competitive edge and give you peace of mind.
If you are looking to guide your patent attorney to have long-term goals in mind, you may want to consider the following:
- Clearly communicate your long-term goals and objectives to your patent attorney. This will help them understand your overall vision and how to align their work with your goals.
- Encourage your patent attorney to think strategically about your patent portfolio. This may involve considering how your patents can be leveraged to support your long-term goals and objectives.
- Foster open communication and collaboration between you and your patent attorney. This will allow you to stay informed about the latest developments in your patent portfolio and any potential issues that may arise.
- Consider involving your patent attorney in your company’s overall business strategy to align patent strategy with overall business strategy
- Regularly review and assess your patent portfolio’s alignment with your long-term goals and make adjustments as necessary.
It’s important to remember that the role of a patent attorney is to provide legal advice and representation in matters related to patents, and it’s ultimately the client responsibility to ensure that the attorney’s work aligns with the client’s goals.
Understand your pecking order in the lawyer’s client list
If you are a small client assigned to an associate in a big law firm, it is possible that your patent application may be used as a training ground for the associate. In larger law firms, associates may be assigned to work on patent applications for smaller clients as a way to gain experience and build their skills.
This can be beneficial for the associate as they get to work on real cases and gain valuable experience, but it can also have drawbacks for the client. Associates are less experienced than partners, so they may not have the same level of expertise or knowledge. They may also be less efficient in handling the patent application and may require more supervision.
However, it’s important to note that it’s not always the case, and many times associates are assigned to cases based on their experience and skills. Also, the associate will be supervised by a more senior attorney who will review their work and ensure that the patent application is being handled correctly and efficiently.
Large clients with recurring patent work typically have more leverage when it comes to negotiating legal fees with law firms. This is because large clients are often able to provide a steady stream of work to the law firm, which can be more profitable for the firm in the long-term.
As a result, large clients may be able to negotiate more favorable terms, such as lower hourly rates or fixed-fee arrangements, which can help to reduce the overall cost of their legal services.
Additionally, large clients may have more influence in terms of the attorneys and partners that are assigned to their cases. For example, large clients may have the ability to request that more senior or experienced attorneys work on their cases, which can help to ensure that they receive the highest quality of legal representation.
However, it’s important to note that the quality of legal representation doesn’t always depend on the size of the client, and many times the best lawyers are assigned to a case based on their experience and skills regardless of the size of the client.
It’s important for the client to communicate their concerns and expectations to the attorney and the law firm, and ask for the best lawyer for their case, regardless of the size of the client. Also, the client should review the work done by the attorney and ask for more explanation if needed, to make sure that the patent application is on the right track.
It’s important for the client to communicate their concerns and expectations to the attorney and the law firm, and ask for a more senior attorney to be involved in the process if they feel it’s necessary. Also, the client should review the work done by the associate and ask for more explanation if needed, to make sure that the patent application is on the right track.
Communicate your exit goal so your patent attorney can design the perfect portfolio for your goal
It is important to communicate your exit goal to your patent attorney in order for them to design a patent portfolio that aligns with your long-term goals. This means clearly communicating your vision for the future of your business, and what role your patents will play in that vision.
When communicating your exit goal, it is helpful to provide your patent attorney with detailed information about your business and its objectives. This may include information about your target market, your competitive landscape, and your overall growth strategy.
It is also important to discuss your exit strategy with your patent attorney. This may include information about potential acquisition targets, the possibility of going public, or plans to sell your business. Knowing your exit goal will help your patent attorney to design a patent portfolio that will provide the most value and protection for your business in the long-term.
Finally, it is important to have regular communication and collaboration with your patent attorney to review and assess the alignment of your patent portfolio with your exit goal and make adjustments as necessary. This will help ensure that your patent portfolio is always supporting your long-term business objectives.
Tell your lawyer about how you want to use your IP portfolio
It is important to let your attorney know if your goal is to build a big portfolio for licensing purposes or a small portfolio for litigation purposes, as this will help them understand your overall vision and how to align their work with your goals.
A big patent portfolio can be valuable for licensing purposes, as it can provide a wide range of protection for your business and can be licensed to other companies for revenue. In this case, your attorney will likely focus on acquiring a large number of patents that cover a wide range of technologies and that can be used to generate income through licensing.
On the other hand, a small patent portfolio can be more focused and tailored to support specific litigation efforts. In this case, your attorney will likely focus on acquiring fewer patents that are specifically tailored to protect your business from potential infringement lawsuits.
It’s important to communicate your goals and objectives to your attorney, as they will be able to advise you on the best way to build and manage a patent portfolio that aligns with your business goals.
Also, it’s important to regularly review and assess your patent portfolio’s alignment with your goals and make adjustments as necessary, and to communicate any changes in your goals to your attorney.
The value of a patent depends on what type of company you run and what your most valuable assets are
One of the key questions that a company has to answer when evaluating a patent portfolio is, “What is the value of a patent?” The answer depends on a number of factors, such as the type of business that you operate, your industry and the age of your company.
A patent can be used to develop new products, as well as for protection. It can help companies to set the price of their products and to boost their branding efforts. In addition, a patent can be licensed for new revenue.
In 1999, IBM leveraged its patents for $30 billion. This represented one-ninth of its pretax profits. Today, the company earns about $1 billion a year from patent royalties. And Xerox, with its newly appointed chief executive officer, John Thoman, plans to increase Xerox’s patent royalties to $200 million within two years.
Companies with large R&D expenditures and high-potential technologies should consider protecting their intellectual property. Having a patent portfolio can provide a way to protect a company’s most valuable assets. Using the knowledge that a patent provides, companies can guide their R&D programs and steer M&A initiatives.
Patents can also be a source of R&D funding. For example, Lucent, a major player in the communications sector, invests 12.2% of its $30 billion in annual revenues in R&D.
Another reason why companies should consider protecting their intellectual property is to secure their competitive edge. By doing so, they can build brand loyalty and increase their credibility as an innovator. Moreover, they can create favorable partnerships and license agreements.
Having a patent also helps to enhance a company’s competitive intelligence. Analysts and investors are becoming more aware of the importance of a patent’s impact on a company’s financial prospects.
If you’re planning to sell your business, make sure that you include your intellectual property. Some people mistakenly think that patents only add to the price of an acquisition.
If you’re selling a patent, you’ll need to get a fair asking price. This can be accomplished by combining several financial valuation metrics. These can be found in income statements and balance sheets.
discuss fee expectations with the lawyer
If your patent lawyer is currently on an hourly fee arrangement, you may want to discuss the possibility of a fixed-fee arrangement with them. A fixed-fee arrangement means that the attorney will charge a set amount of money for their services, regardless of the number of hours they spend working on your case.
This type of arrangement can be beneficial for clients because it provides more predictability and certainty when it comes to legal costs. Clients can budget for the cost of legal services more accurately, and they do not have to worry about unexpected bills.
It’s important to note that fixed-fee arrangement can be a win-win situation for both the client and the attorney. The attorney can plan and budget their time more effectively, and the client can budget their expenses more accurately.
When discussing a fixed-fee arrangement with your attorney, it’s important to be transparent about your budget and the scope of work that you need to be done. Also, it’s important to get a clear understanding of what services are included in the fixed fee and what services will be billed separately.
It’s also important to remember that a fixed-fee arrangement may not be suitable for all types of patent work, as some cases may be more complex and require more time and resources. In these cases, the attorney may suggest that you continue with an hourly fee arrangement.
Discuss innovative working arrangements with the lawyer
If you are looking to cut costs on your patent work, you may want to discuss innovative arrangements with your patent lawyer. For example, many patent applicants use IP drafting tools from PowerPatent to provide high-quality patent disclosures, and such disclosures enable the patent attorney to focus more on the strategic aspects of patent claims rather on the technical details of the hardware. Such arrangement can be win-win in that it enables the lawyer to keep her $1000/hr billing rate while keeping your costs low. Both parties win!
IP drafting tools are software programs that can help to automate the patent drafting process, by generating patent claims and other legal documents based on input from the user. This can help to reduce the amount of time and resources that are required to prepare a patent application, and can help to speed up the patenting process.
Using IP drafting tools can also help to improve the quality of patent disclosures, by providing a consistent format for patent claims and other legal documents, and by helping to identify potential issues with the patent application early on.
When discussing the use of IP drafting tools with your patent lawyer, it’s important to communicate your goals and objectives, such as the time and budget for the patent application. Also, it’s important to understand the capabilities of the drafting tool and how it can be integrated with the attorney’s workflow, and what the attorney’s role will be in the process.
It’s also important to remember that the use of IP drafting tools is not suitable for all types of patent work, and it’s important to make sure that the tools used are reliable and that they comply with the patent office regulations.
