If You Have to Ask Your Patent Attorney What Your Company's Patent Strategy Is, You Don't Have One

Tonight I had dinner with a patent attorney friend of mine who I have known for more than 10 years. For the purposes of this post, let's call her "Sue." Sue and I met as young patent attorneys at an intellectual property law firm and grew up together to become partners there. Unlike myself, however, Sue has remained in the law firm environment. These days, she works at a highly prestigious national law firm and has a billable rate of close to $600 an hour. Of course, at this rate, Sue's clients expect to obtain quality representation and, having been a client of hers when I was an in-house corporate attorney, I know that my friend is a great patent attorney and gives excellent service.

As an IP Business Strategist and Consultant (more info here: http://www.jackiehutter.com/), I am no longer engaged on a daily basis in working with clients to obtain patents. In this IP Strategist role, I have developed the view that too many patents are worthless because they are not filed based upon a relevant business case. Put another way, it is my opinion that a patent is worthless unless it supports a current business strategy of the company that is seeking the patent. This strong opinion is easy to state, and I have been seeking to have it validated by someone who makes their money from obtaining patents for business clients.

Sue was a great audience for my perspective because her clients generally pay $20,000 or more for an application prepared and filed by her, which does not include the costs of getting the application through the Patent Office. Seeking her input, I asked her if this statement was true: If someone has to ask you their patent attorney what their patent strategy is, does that mean they do or don't have a patent strategy? Sue responded "if they have to come to asking for an answer to that question, they absolutely don't have a patent strategy." Sue followed up: "My job is to obtain patent protection for my clients, not to tell them whether they should or should not obtain a patent. If they come to me, I assume they need a patent and will do whatever I can to get them one."

This honest answer from a prestigious patent attorney should provide confirmation to you as a business or investment professional that patent strategy means more than merely having your patent attorney prepare and file a patent application. Rather, a fully formed business strategy must necessarily preceed any decision to file for a patent. If a patent is filed for without a first developing a business case to support that filing, then, at best, your business is likely wasting money on that patent filing. At worst, your company will not be able to realize its business objectives because you have not properly protected your product space with patent rights that prevent competitors from knocking your product off.

It is critical for business and investment professionals who deal with patents to realize that, as specialty counsel, patent attorneys have no knowledge of whether your company has developed a business case prior to your instructing them to prepare and file a patent application. Moreover, your patent attorney does not know whether your company has a business case that still supports continuation of patenting efforts after the application has been sitting in the Patent Office for two or more years. To the contrary, if the patent application has been filed, your patent attorney's job is to see the process through the Patent Office unless you instruct them otherwise. In short, it is your patent attorney's job to execute the patent strategy that you develop as part and parcel to your business strategy.

So, if your C-level management asks you what your company's patent strategy is, don't pick up the phone to call your patent attorney. Patent strategy is business strategy, and it is your job to be able to articulate it. If you cannot, your company does not have a patent strategy.