PATENT ATTORNEY
In the earliest stages of forming a company, the entrepreneur should turn to a patent attorney for an assessment of the patents protecting the startup's technology and of other patents that will affect the ability of the company to use its own technology. There are several factors to consider when selecting a patent attorney:
- Is the attorney familiar with your field?
- Does the attorney have experience with intellectual property strategy as well as filing and litigation?
- Is the attorney willing to state opinions and make recommendations rather than just list options?
- Will the patent attorney be able to work effectively with the corporate attorney?
Take the time to meet with partners at several firms, including at least one boutique (small/specialized) firm and one larger firm. Your first meeting with an attorney is free of charge to allow for mutual evaluation.
A university TLO will hire a patent attorney to write and prosecute its patent applications, which includes extensive prior art searching of online databases and libraries and possibly manual searching of the patent stacks in Washington D.C. The TLO may arrange for you to meet with the attorney to discuss the patent and prior art, but the TLO will not invest in having the patent attorney do further research on the startup's behalf. It is essential that you hire your own patent attorney before licensing technology from the university, even if it happens to be the same attorney hired by the TLO. Hiring the same attorney that the TLO used can save time and money since the attorney is already up to speed. However, the TLO may not have selected the most experienced attorney or the right firm for you.
Some patent attorneys have the business expertise to advise on the strategic management of a patent portfolio. When a company has a focused IP strategy, it can redirect its research program to generate new patents that will strengthen the company's patent position or block competitors. Your company may elect to use a single IP law firm for both patent prosecution and IP strategy or may use two separate firms.
An experienced attorney willing to actually recommend a course of action can be a valuable partner. Ask the attorney, for example, whether the value of a particular patent to the company's business model warrants the expense of filing for international protection of the technology. These kinds of questions will help you determine how comfortable the attorney is thinking about IP in a business context and offering advice.
If you know that your startup might want to sub-license your intellectual property to a particular company, consider retaining that company's patent law firm (patents list the law firm that prosecuted the application). The firm may introduce you to the company and would ensure that your patents are constructed according to the company's standards. This tactic is only feasible if the attorney is not conflicted by overlap of your IP with the other company.
Patent law firms rarely defer their fees. Most patent attorneys are overworked and can afford to insist that clients pay promptly. Because patent fees can accumulate rapidly, the law firm would take on significant risk by deferring collection from an unfinanced startup. Preferring to keep things simple, most patent firms will not take equity in lieu of fees or in exchange for fee deferment.
It is quite common for a company to have one or more patent law firms handling its IP and to have a corporate law firm doing other legal work. Some corporate law firms have recently started patent practices, a few of which are well respected for their biotechnology expertise. There are advantages to working with a firm that has corporate and patent law practices. During financing or negotiation of alliances, corporate and patent attorneys may need to confer with each other to resolve issues at the interface between business and intellectual property (e.g. IP-related milestones). Attorneys in the same firm can easily confer with each other and may be more productive than attorneys at separate firms.
Another advantage of working with a firm that does both corporate and patent work is that it may defer all fees, including those that are patent-related. However, some multi-practice law firms will still only allow deferment of corporate legal fees, refusing to defer collection of patent-related fees for the same reasons that patent firms don't do this. In all cases, law firms do not defer collection of third-party disbursements such as incorporation fees and patent filing fees.