Two tracks are better than one: Is your IP counsel truly only a patent attorney?

Posted by J Matthew Buchanan at April 12, 2005 02:16 PM

Nipper, Sorocco and I are all patent attorneys.  Like all patent attorneys, we prepare and prosecute patent applications.  But, unlike many patent attorneys, we look at the protection of inventions in a broader context.

Many patent attorneys have a one track mind:  patents…patents…patents.  When a client asks for legal advice on how to protect an invention, they begin quoting rates (or fees, whichever term you like) for patent applications.  They never even bother to ask the question of whether a patent is the best form of protection.  Many times it is not, meaning a patent attorney with a one-track mind is doing the client a disservice.

Of course there’s always the obvious issue of whether an invention should be kept as a trade secret.  Some patent attorneys will consider this in their analysis, but even this gets short shrift by many attorneys.

Other, not so obvious considerations are starting to come into the mix, too.  For example…suppose a client has an opportunity to exclusively license its technology to a Chinese company that has a 90% share of the Chinese market.  Is it worth pursuing a Chinese patent?  Are there other options?

A patent attorney with a one track mind would immediately quote rates (fees) for Chinese applications.

But wait.  Let’s open a second track and ask some tough questions.  What if its not a single patent application, but fifty?  One hundred?  Is this an opportunity that can wait for the filing of all the applications?  Have some or all already been filed?  Issued? What do we know about Chinese intellectual property law today that may help in the analysis?  How valuable is a Chinese patent?  What is the likelihood of being able to successfully enforce a Chinese patent?  Is the ‘enforceability’ of Chinese patents on an uptick or a downtick?  Any risks in disclosing to the Chinese without having an application on file?  Is there a foundation of trust between the client and the potential Chinese licensee?  What about Chinese confidentiality and trade secret laws?  How do the Chinese view technology licenses?  Patent licenses?

Could an exclusive license to the client’s technology, in the absence of Chinese patents, be sufficient?  Is it a better business deal when compared to filing one/fifty/one hundred Chinese patent applications and licensing the resulting patents?

The attorney can’t answer the business deal question.  But, a patent attorney that thinks on at least two tracks can better help the client faced with the problem.  Indeed, he can actually counsel the client.

This is just an example to generate some thinking.  The bottom line is this:  its not always about patents…patents…patents.  Your patent attorney should help you open the second track when appropriate and consider alternatives.


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