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Author Topic: Advice on operating as a consultant  (Read 1293 times)

roburrito

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Advice on operating as a consultant
« on: 11-01-11 at 02:16 pm »

I am currently working as an "IP Strategist" at a small automotive company. Basically I review what we're developing, find potential IP, write patent proposals, and work with outside counsel to get applications written and filed. I started here as an intern. Lately work has been slow. The VP of my company referred another company to me to do some similar work. I'm not sure how to proceed. I am a registered patent attorney and would rather not get paid like an intern. As a consultant I'm not sure 1) how much to charge 2) whether I need malpractice insurance 3) if there's anything else I'd need to do. I know the typical advice is to work at a firm before hanging your own shingle, but I haven't had much luck finding a position at a firm. Any advice or info would be appreciated.

As far as info about myself, I am located in the Boston area. I have a BS in Aerospace Engineering but most of my experience has been with automotive companies.
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NJ Patent1

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Re: Advice on operating as a consultant
« Reply #1 on: 11-01-11 at 05:25 pm »

Ruburitto:  Ahh, not easy questions:

     1)  How much to charge?  Ties into Q2.  What "services" are you / would you provide?  As a "consultant" mining for IP and writing proposals and "facilitating" drafting?  Doesn't sound like providing legal svcs.  My best guess, is circa $80 / hr (Bos about 95% of NYC).

     2) Do you need malpractice insurance?  If you are not drafting apps or renedering legal opinions, merely rendering "observations" on promising paths to follow, your liability is low, but not zero.  If you go the consultant route, make sure the engagement letter makes clear that you are not rendering legal advice.  Tough call.  You are a licensed atty.  When does an atty NOT dispense legal advice.  Even your 'observations" could be construed as legal advice.  Any guidance from the Mass bar?.  If you need insurance, double (at least) the above # (N.b.  According to a talk I heard in 2003 from a carrier rep, only anesthesthiologists pay more, on average, than patent attys.  Was that true or a scare tactic?????

     3)  Hanging-out your shingle?  Sounds like you are embarking on the practice of law and you have a leg-up.  A recommendation from a client!  Worth gold IMO.  Good lick, keep in touch on the site.

 

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bleedingpen

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Re: Advice on operating as a consultant
« Reply #2 on: 11-02-11 at 06:05 am »

I would cozy up with the outside counsel if I were you.  They may be able to provide you with a soft landing spot if needed.
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Wiscagent

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Re: Advice on operating as a consultant
« Reply #3 on: 11-02-11 at 07:47 am »

roburrito -

If you worked for the second company as an employee, that might mitigate the need for mal-practice insurance.  (Attorneys:  is that correct?) 

Of course the second company might not want to take on the baggage that comes along with adding another employee; so being a contractor or consultant might be the only option.  It seems to me that if you're going to be a consultant, then you essentially have a created a mini-firm with one client.  So you'd better start shopping for insurance.

As for the "only anesthesiologists pay more, on average, than patent attys" comment ... contact some carriers and find out.  Last time I looked into it (as an agent) the insurance cost related to the size of your income.  So if you're billing, for example less than $100,000/yr the insurance might not be prohibitive.
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Richard Tanzer
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roburrito

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Re: Advice on operating as a consultant
« Reply #4 on: 11-02-11 at 08:45 am »

Thank you for the advice. I'll be meeting with the client later today and we'll see how that goes. I'll look into insurance companies after the meeting. I was supposed to talk to a local small practitioner for some advice but unfortunately he had to reschedule.
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