Only You Can Prevent Patent Expertise Creep: Recognizing the Proper Role of Your Patent Attorneys

Your company has a question about your company's patent portfolio. This is an issue for your company's in-house or outside patent counsel, right? Maybe not. If the question relates to whether an invention is patentable and whether the patent is likely to grant, a patent attorney is the correct person to contact. But if the question is whether you should obtain a patent on a patentable invention, your company's patent counsel is quite probably not the correct source of counsel. The latter is a question of patent strategy, which is inherently a business question, not a legal question. However, many businesses assume that when a patent issue comes up, a patent attorney should be contacted because a patent attorney knows about patents.

So why are patent attorneys typically not suited to address patent business questions? As many people know, useful, novel and unobvious inventions are patentable. Significantly, however, there is no legal requirement that an invention have a business purpose in order to be patentable. Indeed, in my prior life as a patent attorney, most of the 100's of patents that I obtained on behalf of my clients ended up being worthless.

And, truthfully, it did not matter to me whether the invention had a business purpose for my client because as a patent attorney my motivation was purely legal: if the invention was patentable I would do whatever I could to convince the Patent Office that my client deserved a patent. My efforts were typically wholly divorced from any business purpose and, unfortunately, once the patenting process got underway, the process often became an end unto itself. As a result, my clients' and my focus was on whether the patent would issue, not whether the continued efforts to obtain the patent supported the business needs of the client. Put simply, the job of a patent attorney is to obtain patents on the client's patentable inventions, not to ensure the patents are a good business decision for the client. The latter issue is a business question, which should be outside the purview of a patent attorney.

As an IP strategist and consultant (more info here: www.jackiehutter.com), I have seen many companies facilitate this expertise creep of their in-house or outside patent attorneys. Patents are arcane, and it may seem to make sense to allow a legitimate patent expert handle something that "looks and smells" like a patent. But, there are significant and critical distinctions between patent procurement and patent strategy.

These distinctions can be compared the differences in the expertise types of an optometrist and an opthamologist. Both of these learned professions involve treatment of the eye, but each of these doctors treat very different aspects of the eye. An opthamologist will be able to treat diseases of the eye, but if you need vision correction, you are wasting your money (and probably a lot of it) if you are asking your opthamologist to recommend prescription lenses for you. And at the end of the process, it is questionable that you will see clearly because most opthamologists are not trained in optometry.

Of course, most people know better than to ask their opthamologist to prescribe them glasses. In any case, the opthamologist certainly will tell the patient that their vision correction concerns are best addressed by an optometrist. This clear separation of responsibilities is a result of the established nature of treatment of the eye. Over the years, each of these medical specialties has emerged and each has evolved into distinct areas of practice.

In contrast, patent strategy has emerged as an area of business focus only in the past few years. Accordingly, there has not been enough time for a generally recognized distinction to have arisen between the practice of obtaining patents and the practice of aligning patents with business strategy. As more business leaders begin to understand the distinction between these two efforts, it will become less common for companies to assume that patent attorneys should be consulted regarding patent business questions. However, for the immediate future, I believe that it will be common for many patent attorneys to improperly profer business strategy advice to their clients when they should instead be truthful to the client and admit that business advice is not within their area of expertise. Unfortunately, many patent attorneys are unenthusiastic about making such admissions to their clients.

It is then up to you as a business leader to serve as the gatekeeper for your company's patent strategy and patent issues to ensure that your patent attorney does not become the sole purveyor of these two very different types of patent expertise. In short, only you can prevent patent expertise creep.