The Evolving Role of a Patent Attorney in Tech

The role of patent attorneys has morphed into that of a technically competent legal and business advisor. It is not enough to wear one hat.

Patent Attorneys Must Be Business Advisors

A patent attorney who sits in a home office filing applications on demand does little for the business. That’s not the role. Effective patent attorneys must understand where your business is headed, what the “crown jewel” technologies of the company are, and what the competition is doing. This requires technical savvy, legal talent, and business judgment. 

Modern Patent Attorneys Provide These Services

Here are some of the many services that a valuable and business-aware patent attorney can do.

• Business Intelligence: Patent lawyers are suited to analyze competitive patent filings, tradeshow displays, 10Ks, 10Qs, and other public information to understand where your competition is headed with their product offerings, and where there might be opportunities for your company. 

• Infringement Risk Mitigation: Patent attorneys often analyze competitors in-force patents and assess risks of moving forward on technologies that near the claims of issued patents. Where there are risks, we propose risk mitigation plans. These can include oral and written non-infringement opinions, freedom to operate studies, knocking out certain patents in post grant proceedings (PGRs) or inter partes reviews (IPRs) at the Patent Office, or even proposing design changes to products that avoid patent claims but do not reduce performance.

• Invention Harvesting: Patent lawyers guide engineering teams in identifying their innovations and develop criteria for determining which should be filed as patent applications and which should be maintained as trade secrets. 

• Patent Application Drafting: Patent lawyers make sure your patent applications cover what they must to be valuable. We also draft a robust specification to give options for amendments during the examination process.

• International Patent Strategy: If the Chinese market is important to your business, a US patent alone will not do much good. Patent attorneys can work with you to determine the most cost-effective way to give you robust protection around the globe for your business model. 

• Patent Litigation: Patent lawyers can represent clients who assert their patents against infringers. We also defend clients facing accusations of infringement. We bring common sense and predictability to what can sometimes feel the Wild West. We do this through seeking early resolution opportunities and treating the lawsuit as business tool to achieve a specific end. Ask us about alternative fee arrangements for litigation.