“In patenting, one size does not fit all. There are many clients and there should be as many strategies, and those many strategies should change as the needs and ambitions of your clients change.”
Patent attorneys are a talented bunch. Having taught many thousand through the years, I can say, confidently, this is a self-selecting field. The best grades, the most ambition, the most legal talent. Not, sadly, the most personality but, hey, 3 out of 4 is not bad! Hence, it is not a group that likely does much navel gazing as to whether they know what there are doing. Besides, the MPEP is always right there to avoid any and all ambiguity! Sure.
But, I am not referring to what and when and whether to file papers at the PTO, or how to respond, interpret guidance, etc. What I am referring to is: do you know what you’re doing with respect to the near, medium, and long term interests of each of the clients you have?
You see, in patenting, one size does not fit all. There are many clients and there should be as many strategies, and those many strategies should change as the needs and ambitions of your clients change. A start-up is not generic. A growing company is not generic. An industry leader is not generic. Tech transfer is not generic. Independent inventors are not generic. I expect, by now, you get the point. Generally prescriptive advice is not really any advice at all.
Rather, each client has unique business/commercial objectives. A patent/portfolio strategy should be conceived to support and achieve those objectives, and should be adjusted as those objectives are reconsidered, cast aside, re-stated, or re-defined. Fine. How does this occur?
Well, how many annual reports have you read lately from your clients? Listened to any recent talks given by the CEO (or University President, or CTO, or CFO, etc.). Does what is revealed in that report (or those presentations) reflect what your advice is helping achieve? Do you keep track of the client’s competitors to see what they are doing? To whom do you report that is listed in that annual report, or mentioned in that speech, and does that person speak patents?
Generally, the C-Level in a client entity is shielded from the patenting and IP processes generally. Too “in-the-weeds” for such lofty consideration. That may be true day-to-day, but it is not true quarter-to-quarter. This is easily proven inasmuch as IP processes spend and commit funds that could have and might have other priorities, and vice versa, and IP liabilities, sadly, have a way of growing when unattended, not receding. It could be said, that day-to-day, IP processes can be left to the professionals, but that in the year-to-year picture they are way too important to be left to the IP professionals. We, as patent folks who genuinely want to help clients succeed, need to know our clients needs as well as they know their needs, and possibly better. We, after all, are supposed to know what is happening in the IP universe, not just here but in the client’s important jurisdictions. Have you suggested to the clients how to handle a “hard Brexit”, for example?
I recall a friend who worked deep in the patent trenches at a Fortune 50 company for 20+ years. Did great work, knew their inventors and technology up, down, and sideways. Smart, talented, etc. all of the above. The company then had the bright, i.e., Wall Street driven, idea to break themselves into smaller multi-billion dollar entities; he was summarily whisked out, to a new smaller city, to become “Chief” Patent Counsel at one of these newly formed entities. He would now sit in Board meetings and have to have answers for the C-Level and Board Level people; he’d have to make his own presentations of why what he proposed, budget and resource wise, was justified and would further the respective near, medium, and long-term goals of the new enterprise. He had no idea where to begin and sat, petrified, in the first six months of such meetings hoping not to make eye contact with anyone who wanted to know what role, ifany, patents, or IP generally, would play in shaping the future of the newly minted enterprise.
Well, during this time frame he called me – John, do you have any ideas? Sure, I do.
First, do not think of patents as patent people do, i.e., merely another filing or process. Think of them as distinct property and think of them as a “factor”. You see, despite what you may think as a patent person about patents, other non-patent people do not have the same informed perception. You’ll learn that, right or wrong, perception is reality. When one C-level tells another “we have patents on that, we own it”, they’re not talking “broadest reasonable interpretation” or “Philips …blah blah blah”, like we do when we get together at patent confabs; nope, they’re talking like you own your car or house or boat. It’s ours and you can’t have it. No weaselly attorney speak. Hence, do your patents “own that”? Do you know if what they own is relevant to the business today, tomorrow or is simply a relic collecting maintenance fees and annuities? That’s what I mean when I ask: do you know what you’re doing? Does your patent or IP advice accomplish what it is that the company needs that advice to accomplish? Putting every other consideration aside; this is the only thing that matters. Does the IP solve or get rid of a problem; and/or does it provide a path forward that the entity could not otherwise take? Done.
Forget the “patent speak”. Keep that for our secret handshake moments among your patent marinated friends.
Image Source: Deposit Photos.