‘Patent Prosecutor’ or ‘IP Counselor’?: Clients and Practitioners Should Choose Wisely

By Carlo Cotrone
August 6, 2017

At a recent intellectual property (IP) conference, I attended a session with practitioners from both private law firms and corporations. One practitioner declared confidently to the group, “I’m just a patent prosecutor. I get patents.” That remark took me aback. Since early in my career, I have avoided self-identifying exclusively as a “patent prosecutor.” This goes beyond semantics and marketing spin. Over the years, I’ve intentionally sought to cultivate a broad skill set as an IP counselor—someone with the versatility to handle patent portfolio development, offensive and defensive patent strategy, transactions, disputes, and more. For an IP counselor, patent prosecution skills are not the sum total of what’s offered to a client. They’re a subset of the practitioner’s counseling “A game,” serving as an enabler of broader IP and business strategies.

Patent prosecution—the act of negotiating with a U.S. or foreign patent office to obtain patent protection—sometimes is viewed unfavorably by lawyers and clients, being associated with (1) limited career scope, (2) commodity work product, and (3) reduced law firm profitability. This baggage may impede patent prosecutors’ advancement within some organizations, despite the talent they bring and the results they achieve. Unfortunately, patent prosecutors may unwittingly perpetuate negative stereotypes by adopting a complacent approach to their practice. By its nature, patent prosecution may breed such complacency, thus hindering a practitioner’s effectiveness and professional development.

Patent prosecutors who view themselves first and foremost as IP counselors—and strive to embody the seven traits described below—are more likely to grow and retain clients and ultimately have more fulfilling careers.

Why an IP Counselor?

The Practitioner’s Perspective

During my tenure in private law practice, I prosecuted patent applications myself and managed associate attorneys and patent agents on prosecution matters. I quickly figured out that patent prosecution has several predominant characteristics:

  • It’s rhythmic, structured, and constant. In many ways, patent prosecution is like clockwork. You prepare a patent application, file it, receive written communications from the relevant patent office, respond in writing by the due date, and so on. Although you’re never quite sure what curve balls, including prior art, may be thrown by the examiner, the basic protocol for the negotiations never really changes. Similarly, except for occasional significant shifts in the regulatory, statutory, or judicial landscape, core prosecution practices and legal constructs such as novelty and obviousness remain essentially constant.
  • A law degree is not required. Neither a law degree nor courses in legal writing or advocacy are prerequisites for patent prosecution. Written responses to Office actions often read more like technical papers than legal briefs. However, in cases where the cited prior art appears to align closely with the claimed invention, nuanced argumentation may be critical to securing a notice of allowance.
  • It can be undertaken without human interaction. At least theoretically, substantive patent prosecution work can be handled by a single practitioner who drafts a patent application and responses to Office actions. Practitioners are not duty-bound to speak with anyone at the United States Patent and Trademark Office (USPTO).
  • The more applications, the better. A large docket of pending cases, augmented by a steady stream of new client filings, typically translates into substantial law firm revenue. Each Office action affords a chance to perform more billable work. A client’s decision to abandon a case deprives the prosecuting firm of further revenue.
  • Getting a case allowed is often the primary measure of success. To many practitioners, the end game of patent prosecution is the receipt of a notice of allowance. Yet, too often they don’t consult with the client throughout patent prosecution to confirm that the focus of the patent claims remains appropriate, and that patent protection will indeed provide real-world value to the client’s business.

Taken together, the above characteristics may promote a complacency that commoditizes patent prosecution. The work becomes more about the routine, volume, and “churn” than about obtaining IP that can be exploited for the client’s maximum benefit. The worst-case outcome is when a patent prosecutor defines excellence in formulaic terms—by filing and prosecuting a lot of cases, doing a methodical job, and getting cases allowed, all with minimal dialogue with clients and a blithe disregard for the bigger picture.

Taking the path of least resistance may come at a cost. Those who prosecute patents operate in an ever more competitive environment in which most clients expect more for less. To distinguish themselves vis-à-vis the competition, patent prosecutors need to do far more than the minimum—they need to be true counselors of their clients.

Moreover, a practitioner who fixates on the minutiae of patent prosecution may be perceived as a less valuable colleague within a law firm or corporate legal department. Such a perception may discourage litigation and other colleagues from teaming up with the practitioner on interesting projects that could broaden his or her horizons and strengthen his or her reputation within the organization.

In sum, patent prosecutors who operate principally as IP counselors best position themselves to make a greater impact on their clients and build a more profitable, sustainable practice. And they’re likely to relish their professional work much more in the short term and over the long haul.

The Client’s Perspective

Now an in-house IP lawyer, I manage outside counsel who prepare and prosecute patent applications on my company’s behalf. As a law firm client and a consumer of patent prosecution services, I’ve become acutely aware that:

  • A multitude of law firms offer patent prosecution services. In fact, the options seem unlimited and largely undifferentiated. The pitches of law firms seeking work are remarkably consistent in emphasis, typically describing their (a) flexibility to offer price-competitive alternative fee arrangements, (b) technical and legal expertise, (c) process efficiency, and (d) bench strength to handle numerous cases.
  • Competence is in ample supply. Many patent prosecutors can and do write good patent applications and get cases allowed. They have a solid grasp of the technology at issue, communicate well with inventors and patent examiners, and are attentive to docket deadlines and the relevant patent rules. They’re capable of preparing complete, organized written responses that address issues raised by the patent examiner.

On the other hand:

  • Broader thinking is less prevalent. Some practitioners may masterfully describe a new technology, but they don’t necessarily seek to understand the broader business or market context, to highlight opportunities for portfolio building or monetization that might not be immediately apparent, to continuously confirm the value of the patent application, or to suggest innovative filing strategies. Instead, they tend to think and operate at the invention disclosure and patent application level.

Like many in-house IP counsel, I practice in a resource-constrained environment in which bandwidth is a precious commodity. I’m looking for outside counsel with whom I can partner to magnify the impact of my internal team on my company’s success. In short, I want to engage and retain IP counselors.

Seven Traits of an IP Counselor

In general, a patent prosecutor lives up to the “IP counselor” moniker when he or she exhibits the following seven traits:

  1. An IP counselor is a relentless advocate.

An IP counselor pursues a client’s interests during patent prosecution with the tenacity of a litigator. Examples of such advocacy include:

  • presenting concise, cogent arguments in written Office action responses and appeal briefs that (i) cite to pertinent portions of the prior art and the specification, (ii) avoid needless recapitulation of material, and (iii) seek to convince the reader through compelling, evidence-based legal and technical writing;
  • relying upon examiner interviews as a tactical complement to written communications with the USPTO;
  • navigating USPTO bureaucracy when appropriate, including escalating issues to an examiner’s supervisor and beyond; and
  • leveraging administrative mechanisms, such as the USPTO’s Accelerated Examination, Patent Prosecution Highway (PPH), and After Final Consideration Pilot 2.0 programs, being certain to educate clients on their availability and applicability to specific cases.
  1. An IP counselor seeks opportunities to build new skills.

An IP counselor is ready and willing to move outside the comfort zone of patent prosecution. For instance, experiences handling opinion work, IP clearance analyses, inter partes review (IPR) proceedings, IP litigation, licensing matters, or IP due diligence for mergers and acquisitions (M&A) enable a practitioner to approach patent prosecution from different angles, with a view towards maximizing the value of the IP being sought.

  1. An IP counselor defines value from the client’s perspective.

To an IP counselor, success means getting cases with strategically valuable claim scope allowed. Rather than waiting for the client to initiate discussions, an IP counselor raises the value question periodically during prosecution of an application to confirm that the protection being sought is worth the client’s investment. He or she is never afraid to recommend dropping a case that appears to be a lost cause or of questionable business value, even though such advice may run counter to personal and law firm interests, at least in the near term.

  1. An IP counselor pursues real dialogue with clients.

I occasionally encounter patent prosecutors who seldom ever speak to their clients, instead attempting to conduct their practice via email. Instead of picking up the phone, they escalate email use when clients are unresponsive. A true IP counselor aggressively seeks dialogue for the purposes of gathering input from, collaborating with, and advising clients. Such dialogue enables a practitioner to better contextualize the patent prosecution work being performed and provide the most impactful representation. I’ve argued in the past—and continue to believe—that overuse of email also raises potential ethics issues.

  1. An IP counselor stays on top of relevant legal and business developments.

Because of the relative constancy of patent prosecution noted above, some practitioners may feel that they can competently do their job in much the same way as they always have. In contrast, an IP counselor doesn’t prosecute patent applications in a vacuum, uninformed by the current business, technological, and legal landscape. He or she actively stays abreast of relevant developments in order to think critically and utilize the law to the client’s advantage.

  1. An IP counselor thinks broadly and pragmatically.

An IP counselor resists the temptation to permit the technical details, structures, and rhythms inherent in patent prosecution to preempt the kind of broader, more strategic, and more flexible thinking and execution that only result when one deliberately takes a step back from the work at hand. For example, an IP counselor thinks beyond the client’s specific embodiments and intended field of use, with consideration of the competitive landscape, other potential fields of use, why the client desires a patent (for defensive purposes, offensive litigation, outbound licensing, etc.), and how a patent would fit into the client’s current portfolio or provide a foundation for an emerging portfolio. The answers may not be readily ascertainable, but an IP counselor poses the questions to guide the client toward advantageous outcomes.

  1. An IP counselor is an innovator.

An innovative practitioner takes the initiative to propose or deliver concrete strategies or solutions, when the client has not even asked or has provided vague parameters. Innovation can take many forms and be exhibited by strategists charged with architecting pivotal patent portfolios, as well as career patent prosecutors who write applications on essentially an a la carte basis. Examples include:

  • conceiving a master patent filing strategy to reduce costs and improve patent quality;
  • conducting an analysis of a client’s and its competitors’ patent portfolios to inform the direction of future portfolio development;
  • offering invention harvesting or IP monetization counseling services that can be deployed within the client’s organization; and
  • utilizing state-of-the art patent examiner analytics software to guide prosecution strategies.

Conclusion

Almost universally, IP practitioners pose the same question when meeting a new peer: “Are you in prosecution or litigation?” For those of you who prosecute patents, I encourage you to respond, “I’m an IP counselor,” and intentionally seek to embody the seven traits described above, as a boon both to your clients and your career trajectory. For others who are clients, I encourage you to engage and retain practitioners who embody these traits, even if you primarily assign patent prosecution matters with seemingly narrow focus. IP counselors can offer your enterprise a powerful blend of legal and technical expertise, insightful thinking, and innovative solutions. An IP counselor is never “just a patent prosecutor.”

 

This article reflects my current personal views and should not be necessarily attributed to my current or former employers, or their respective clients or customers.

The Author

Carlo Cotrone

Carlo Cotrone is Senior Intellectual Property Counsel at Baker Hughes, a GE company, in Houston. As lead IP counsel for the Subsea Production Systems, Subsea Drilling Systems, Surface Pressure Control, Downhole Technology, and Production Solutions business units, he develops and manages the execution of offensive and defensive IP strategies; provides IP and general corporate advice; and negotiates strategic agreements with customers, suppliers, and licensees. Previously, Carlo practiced law at several firms on the East Coast and in the Midwest, most recently as a partner.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 5 Comments comments. Join the discussion.

  1. Axel Nix August 6, 2017 7:47 pm

    Great post. Recently took my firm full time, and was looking for a slogan that captures the essence of what the firm is about. I ended up with “Patents that Matter”. Seems that an IP counselor would want to pusue exactly that – patents that matter (and not just any patent).

    But having managed large industry teams for decades I am used to working with KPIs. And I struggle with how to measure whether I am on the right track. Because, as you point out, allowance is not everything. Getting a worthless patent allowed takes away resources from the client that could be used to build valuable IP. Would love to read a follow-up how to measure the efficacy of an IP counselor.

  2. Paul Cole August 7, 2017 5:45 am

    Relentless advocacy begins at the drafting stage.

    It is essential to identify the complete set of new functions or results achieved by the inventor and to ensure that they are described and claimed.

    And vague or overly functional claims are unlikely to impress a peer reviewer or judge, and it is vital not to be mislead by the combination of greed for claims scope and inattention to detail that has plagued many of the claim sets in the Section 101 cases that I have studied.

  3. Anon August 7, 2017 7:00 am

    I would temper “relentless advocate” with a bit of good old engineering trade-off and raise the “value from the client’s perspective to be instead value for the client from an informed advocate’s perspective (they are NOT the same things).

  4. Paul F. Morgan August 7, 2017 6:30 pm

    Re: “I’m just a patent prosecutor. I get patents.”
    Sadly, I have also heard that before – all too often by patent scriveners who use it as an excuse for not keeping up with patent case law and other patent law changes. Just as one example, the hundreds of patent scriveners who kept on using only “means-function” main claims for years after Fed. Cir. decisions had made clear its disadvantages for claim scope or ambiguity. Likewise as to their specifications referring to specification embodiments or summaries as “the invention.”

  5. Jeff Lindsay August 7, 2017 10:14 pm

    Interested in your experience and strategy/tactics about elevating patent issues to the examiner’s supervisor. Can you elaborate on some best practice tips here?

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