Intellectual Property Forums (

(Message started by: Houston_GC on Feb 13th, 2007, 5:43pm)

Title: Inhouse Patent Agents/Patent Lawyers
Post by Houston_GC on Feb 13th, 2007, 5:43pm
I am general counsel at a company with an expanding patent portfolio. We have traditionally outsourced all patent prosecution to a patent agent at a law firm.

I am considering bringing this function inhouse, and adding to the job description more of a broad "IP portfolio protection/management" role which would be responsible for monitoring the patent landscape around our technology and in our industry, interfacing with our R&D group, working with our outside patent litigators, etc.

I would be interested in hearing how this arrangement has worked at other companies. In particular:

(a) Any problems having a patent agent or attorney managed by a non-patent attorney?
(b) How does a non-patent attorney evaluate the quality of an inhouse patent agent/attorney's work? (Other than having it litigated?)
(c) Is a dedicated patent attorney overkill for this kind of work? I.e. do patent attorneys at law firms offload much of their work to patent agents, anyway?
(d) Am I expecting too much of one person in my job description, and would I be better off keeping the work at a firm with deeper resources?
(e) Are there other pros/cons of insourcing this work?

Any thoughts appreciated.

Title: Re: Inhouse Patent Agents/Patent Lawyers
Post by SoCalAttny on Feb 13th, 2007, 9:59pm
I am a patent attorney who is managed by a non-patent attorney. Granted, there are 2 other senior patent attorneys that are peers and not supervisors in the group. Any professional would stay current and operate with the firm and client's interest at heart.

How do you gauge performance? Set metrics for filing applications and establish an allowed patent metric. You want to ensure that applications are eventually allowed, clients pay for issued patents not applications that never issue as patents.

I contend that a farm out may not be as concerned as a profit sharing member of the firm.

Title: Re: Inhouse Patent Agents/Patent Lawyers
Post by Wiscagent on Feb 14th, 2007, 11:07am
Here’s my two cents.

a)  I don’t see any particular problem with a patent agent or attorney being managed by a non-patent attorney.  Since few chief corporate counsels are patent attorneys, that relationship occurs at some level in most companies that employ patent practitioners.  Also, you will undoubtedly still have a relationship with outside patent attorneys for litigation, overflow work, infringement opinions, and so forth.  That outside counsel can also serve as a consultant and provide an additional  pair of eyes to review patent applications as necessary.

b)  “How does a non-patent attorney evaluate the quality of an in-house patent practitioner’s work?”  As a general counsel this is a common problem, you probably work with tax lawyers or accountants, and other specialists.  I would use two criteria (1) Does the patent guy or gal clearly explain their actions in terms you can understand? and (2) Use outside counsel to audit the work.  I disagree with SoCalAttny’s suggestion to “.. establish an allowed patent metric.”  That will be of no help for the first 3 or 4 years of the in-house patent agent/attorney’s employment.  Also, what seems to be an important application today, may not be worth vigorously pursuing several years from now.  Furthermore, your business should be interested in getting valuable patents – encouraging your patent attorney/agent to write narrow, patentable claims of little commercial value is a losing proposition.

Regarding questions (c) and (d), without knowing the details of your business, there is no way to know.  One advantage of hiring a patent attorney would be that the attorney can handle general legal matters as well.  One advantage of hiring a patent professional with a strong technical background is that they can work more closely with R&D or engineering, and may be in a better position to suggest technical / patent strategies.

Other pros / cons?  Dedicated in-house counsel can develop a deeper understanding of your technology, prior art and competitive environment than even the best outsider.  Over the course of a few years, the insider can have better perspective on what is good for the business, where to allocate resources, which patent applications to pursue (and where), and the impact of competitive market and patent activities.

I hope that helps.  Maybe it was a nickel’s worth, not just two cents.

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