What to Look for in an Intellectual Property (IP) Attorney
Intellectual property (IP) is a complex area of law for a number of reasons. First and foremost, it involves products of the mind. These abstract ideas may be clear to the owner but less so to other interested parties including other businesses, a judge, or members of a jury.
In addition, intellectual property rights are governed by a number of laws, which must be properly interpreted based on the very specific details of a particular case. This is made even more challenging in today’s global economy, where rights may be contested or infringed upon by parties outside the U.S., and where ideas can be shared—legally or illegally—with a few keystrokes.
Given what is at stake when IP ownership issues arise, it is critical that the IP attorney you choose to work with has the skills, experience, and understanding of IP law necessary to successfully navigate any challenges to your intellectual property. IP law is about much more than writing patents.
Key Attributes of an IP Attorney
To ensure that your intellectual property gets the best possible protection, it is important that you keep these five key considerations in mind when selecting an IP lawyer:
- Who is writing the patents?
The fact that an attorney is a subject matter expert in one field does not mean they are necessarily qualified to write patents in another. For example, an IP lawyer with a background in chemical engineering may not be the best source of guidance on a software patent.
- Is the attorney skilled in finding the unique, patentable element within a complicated product?
In many cases, an intellectual property asset is made up of certain components that may be patentable and other components that clearly cannot be patented. Your attorney must be able to tell the difference.
- Can the attorney provide a comprehensive IP protection strategy?
Simply filing the paperwork to patent an invention does not ensure that it is protected. There are many steps that must be taken to develop and maintain an effective defense.
- Can the IP lawyer produce examples that support their claim of IP expertise?
You need an attorney that has been successful both in litigating and settling IP infringement cases.
- Is the IP attorney known in legal circles?
IP law is not a popularity contest. However, an attorney that is skilled in their field will be known by others in their area of expertise. While every lawyer needs to start somewhere, you do not want to entrust your valuable IP assets to an attorney who is still getting up to speed on IP law.
Research is the Key to Selecting an Intellectual Property Attorney
When companies develop a new IP asset, they often feel pressured to establish protection for it quickly. This can cause them to choose an attorney hastily and later regret their selection. Choosing the right IP lawyer requires research and careful consideration.
Ideally you should conduct your research before you have an urgent need for legal guidance. When you are doing your assessment, take into account things like:
- Cost. You don’t want to overpay for legal services, but it is also true that “you get what you pay for.”
- Location. If you prefer face-to-face meetings, geographic proximity may be important to you. However, with the many digital communication platforms and tools available today, location tends to be less of an issue.
- Availability. An attorney who can’t find the time to get on the phone and answer your questions about their background and services probably is not one you want to work with.
If your company will be creating intellectual property—and most organizations do—you would be wise to establish a relationship with an IP law firm whose lawyers can address your specific needs. And, the sooner you make that connection, the better.