In Defence of Patent Agents

One of the hardest things a member of the patent bar has to do is to tell a client that his patent is not valid. That is particularly hard in the presence of the patent attorney. At first the advice is met with disbelief and bewilderment. Then looks of anger initially directed towards me and then towards the agent. Usually it is not the attorney’s fault. Often he or she had warned the client that that would probably be the case; but the client tells the agent to persevere anyway. And then when the envelope bearing the certificate of grant pops through the post, the client feels vindicated. Until, that is, someone infringes his patent. And that’s when I am, or somebody like me comes in. And then I have to tell the client that the tens of thousands of pounds that he may have spent on letters to the examiner, PCT applications and proceedings around the world in the national phase were probably wasted.

Much the same happens though to a lesser extent when an inventor receives his grant but nobody wants to talk to the inventor about his invention. That happens regularly and frequently because, as Lord Justice Jacob put it (perhaps a little unkindly) most patents don’t matter. Barker and Bissell put it rather more starkly in “A Better Mousetrap”: most patents are never worked and the few that are rarely cover their costs. Only a very small number actually make serious money for their inventors. When it finally dawns on the private inventor that the thousands that he spent on British, European and overseas patents will probably not make his fortune the inventor rails against his agent blaming the agent for not saving him from himself.

That is understandable but it is also very unfair to patent agents. They are not business advisers. Their job is to take their client’s instructions and to carry them out. Second guessing a client as to whether he or she is doing the right thing would be seen by many clients and indeed many patent agents as an impertinence. It would be resented just as much as a shop assistant who tells her customer that she looks ridiculous in the dress that she has set her heart on. Patent attorneys should warn their clients of the risks and costs and the scope of the available protection. They should tell them about all the options including legal protection for other intellectual assets that are important to the client’s business. But at the end of the day it’s the client’s decision and nobody else’s. The attorney has to assume that the client knows what he or she is doing.

Now why do businessmen and women and those who wish to go into business to make and market their inventions apply for patents? It’s not as though they are not warned. In his excellent supplement to “A Better Mousetrap”, “Patenting your Invention, the Ugly Truth”, Graham Barker writes at page 22:

  • “Ignore anyone who says you must patent your idea. They’re much more likely to be wrong than right. And ignore anyone who says you must patent your idea straight away. They’re dangerously wrong. Read the warnings in A Better Mousetrap.”

A few lines later he adds

  • “Don’t regard a patent as the best. Regard it as the worst. Think of it as a danger and distraction you don’t want, to be engaged with only as a last resort.”

And Graham Barker is not the only one who spreads this message.

So why don’t inventors take note? Part of the problem is that Business Link, regional development agencies, business angels and venture capitalists tell inventors that patenting is important and from a potential investor’s perspective it often is. But the main reason is lack of understanding of the patent system and how the intellectual property system actually works. Patents, design rights and other intellectual property rights are tools to strengthen a business’s competitive advantage that a patent agent will help a business acquire but choosing the right tools at the right time is a different service altogether.

There is as the insightful American writer Jackie Hutter has noted a new profession of intellectual property strategists coming into being

“IP Strategists are a new type of Intellectual Property advisor. We combine business acumen with IP knowledge to provide business-focused advice. An IP Strategist does not advise you to spend your money on obtaining IP because you can, but because you need to……………..  an IP Strategist first listens to you to determine what your business goals are and how you wish to achieve them and only then will the IP Strategist suggest that you move forward with obtaining cost appropriate IP protection.”

The job of intellectual property strategists is to advise businesses how they can maximize the benefits from their intellectual assets. They do that in a number of ways:

  • “carrying out intellectual asset audits, that is to say identifying potential revenues from licensing, consultancy or assignment as well as legal hazards such as infringement claims by third parties;
  • choosing the optimum legal protection for an intellectual asset having regard to the owner’s business objectives and resources working with patent and trade mark attorneys as and when necessary and specifying the advantages that they need to protect;
  • helping businesses plan for the enforcement or defence of their intellectual property by working with intellectual property insurers and lawyers;
  • valuing businesses’ intellectual property;
  • negotiating licences, manufacturing and distribution, outsourcing, franchising and other agreements; and
  • advising businesses how to use intellectual property to further their business plans.”

Big companies and institutions have always done this for themselves. Small businesses need intellectual property strategists to do this for them.

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About Jane Lambert

I am a barrister specializing in intellectual property, technology, media and entertainment and competition law. I specialize in helping SME (small and medium enterprises) protect and exploit their investment in brands, design, technology and the arts. SME require intellectual property (legal protection for their intellectual assets) at least as much as big business but their limited means restrict the way they can use it. Looking after such clients wisely requires skills and knowledge which have taken me years to learn.
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9 Responses to In Defence of Patent Agents

  1. Pingback: Tweets that mention In Defence of Patent Agents | NIPC Law -- Topsy.com

  2. Jane, I don’t usually reply to posts but your comments hit a sore spot for me.

    As a US trained patent lawyer of 20 plus years now practicing in Europe, I cannot disagree more that a distinction can be drawn between a patent prosecutor and a patent strategist. A patent expert is “a patent strategist” inherently.

    As you know quite well, the word “invention” is a legal term, and not a technical one. An inventor will typically come to a patent expert with a single implementation in mind. That implementation is not the “invention”.

    It is not the job of the inventor to define for the patent expert what the “invention” is as he is not THE lawyer. It is the job of the skilled patent attorney to figure out what the invention is based on information asked and provided by the inventor, and where possible knowledge of the prior art.

    This requires, at a bare minimum, broad and sufficient understanding of (i) the client’s technology, (ii) competitive landscape, (iii) deep understanding of patent law as it applies to the “invention” as claimed, (iv) a deep understanding of what the client aims to accomplish with a particular patent or set of patents, (v) a deeper understanding of litigation strategies and enforcability of patents generally in various jurisdictions around the world; and (vi) most importantly, a client’s budget constraints in the short term, and its exit strategy in the long term.

    Writing a patent application is widely recognized as one of the most difficult legal tasks one could undertake. Yet, to many startup enterpreneurs in Europe, a patent is nothing more than a jazzed up version of a description from an inventor. This makes it particularly important (unfortunately) for a patent expert to wear multiple hats when dealing with startups and individual inventors. The first task is to train and educate the company and/or the inventor on the value and significance of its having a proper patent (or trade secret) strategy, and the role of the patent attorney in that regard; even before setting out to draft that first patent. If the patent attorney can make the sell, then good. If not, best to drop that client and tell them to go somewhere else.

    For a start up, a good patent attorney and his or her advice can make or break a company. Sure, finding a good patent attorney is not as simple as it sounds. Passing the EPO exam does not make a technologist a lawyer any more than it makes him or her a patent strategist or patent litigator. This is knowledge that is cultivated over many years and often from experiences shared by great mentors. In that regard, like anything, selecting a patent expert is a buyer beware choice.

    Affording a good patent attorney is less difficult than most think however, particulalry in hard economic times. A firm that believes in its client will bend over backwards to reduce its fees in exchange for, for example, a small equity interest in the invention or company. Even the most innovative startups will not succeed without a proper IP strategy and a partner to protect that client’s IP assets.

    It is important for CEOs of startups to understand this and to seek out law firms that offer alternative billing arrangements. US law firms routinely will partner with their clients, resulting in a win-win for everyone.

    Spending money for patents that startups cannot afford is not prudent even for the richest of companies. It is the job of folks in our profession to educate startups as to any indirect value of patents, including marketing, licensing outside area of use, and other objectives not understood by clients, and to help them decide not only on scope but on business opportunities and risks they may not otherwise appreciate. !!

  3. Jane Lambert says:

    Thanks for taking the trouble to read the article and for replying. I am very glad you did.

    As you say a good patent agent is likely to be a good strategist. I agree particularly with your point about educating the clients, particularly SMEs but I also think those of us in the IP professions (counsel and solicitors as well as patent and trade mark attorneys) need to educate ourselves more in the needs of business.

  4. Jane Lambert says:

    An interesting article from another US patent attorney who now practises as an IP strategist which Mr Pappas may like to read:
    http://ipassetmaximizerblog.com/?p=1168

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  9. leon says:

    Hello and thank you for this article, as I found my self in this situation now. I am in the middle of a good website creation and I found that another website has patented the system, witch is normally strange because, in my opinion you cannot patent a basic idea. Strange is that this site says it has the patent, but other platforms are doing the idea. So I find myself in the middle of a question mark, but your article made me act more clearly.

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