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10 Questions for Your Intellectual Property Lawyer

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10 Questions For Your Intellectual Property Lawyer © PsychoShadow via Shutterstock

01. DO I REALLY NEED AN IP LAWYER?

Consulting an intellectual property lawyer is critical for entrepreneurs and well-established businesses. “Your strategy needs to be creative and flexible,” says John Palfrey, the author of Intellectual Property Strategy. “Sometimes the best thing to do is to protect your IP rights very rigorously. Other times it may make sense to give something away.”

02. PATENTS, COPYRIGHTS, TRADEMARKS, TRADE SECRETS—WHAT DO I NEED AND WHEN?

Simply put, patents protect inventions, copyrights protect creative works, trademarks are a word or symbol associated with a company or product, and a trade secret is information not privy to the public that provides a competitive edge.

03. WHAT IS YOUR BACKGROUND?

“Having a lawyer with knowledge of your field can be extremely helpful in framing your applications successfully,” Palfrey says. But if your attorney’s area of expertise is too narrow, that can lead to conflicts of interest, according to Frank Bernstein, an IP attorney at Kenyon & Kenyon in Silicon Valley.

04. ARE YOUR REGISTERED WITH THE USPTO?

If you are seeking a patent, or pursuing litigation regarding one, you need a lawyer who is registered with the United States Patent and Trademark Organization. “Typically, to become registered, you also need a science or technology degree,” says Angie Hankins, a partner specializing in IP at Stroock & Stroock & Lavan in New York.

05. HAVE YOU LITIGATED IN PATENT-HEAVY DISTRICTS?

Silicon Valley, East Texas, Delaware and New Jersey see particularly high numbers of patent applications each year, so a lawyer with experience in these districts can be essential. “It is important to know the local rules,” says Megan Olesek, a Kenyon & Kenyon partner. “Having a knowledge of what the judges like and don’t like is also helpful.”

06. I BELIEVE MY INTELLECTUAL PROPERTY HAS BEEN STOLEN. WHAT IS MY RECOURSE?

The first step is usually to inform the perpetrator that he/she/it is using your property unlawfully. A typical next step is to negotiate a license agreement—if you’re interested in licensing. If that process breaks down, you can file a civil lawsuit or even, under certain statutes, have the individual arrested. Of course, “it’s very difficult to protect rights that you haven’t secured,” Palfrey says.

07. HOW CAN I LEVERAGE MY BUSINESS’ INTELLECTUAL PROPERTY TO ATTRACT INVESTORS?

Think of your intellectual property as an asset class. “Investors want to make sure what they’re investing in is fully protected,” Hankins says.

08. CAN YOU DEFEND AGAINST PATENT TROLLS?

Non-practicing entities, or “patent trolls,” base their business on acquiring patents and slapping “offenders” with licensing fees and lawsuits. “This has become a much larger proportion of the IP landscape,” Olesek says.

09. DO I NEED TO PURSUE INTERNATIONAL PROTECTION?

“It’s crucial to ask this at the beginning of the process, because it can add a lot of cost and complexity to the equation, but is also incredibly important,” says Palfrey.

10. DO YOU HAVE EXPERIENCE FILING BEFORE THE INTERNATIONAL TRADE COMMISSION?

Businesses or individuals with their IP protected in the U.S. can file a complaint with the ITC. “If you believe an international product is infringing on your patent, one remedy is to stop those items at the border,” Olesek says.

For more information, contact: John Palfrey, jpalfrey@law.harvard.edu, 617.496.5243; Frank Bernstein, Kenyon & Kenyon, fbernstein@kenyon.com, 408.975.7988; Angie Hankins, Stroock & Stroock & Lavan, ahankins@stroock.com, 212.806.5580; Megan Olesek, Kenyon & Kenyon, molesek@kenyon.com, 408.975.7952.

Question 4 originally incorrectly stated “If you are seeking a patent or trademark, or pursuing litigation regarding either, you need a lawyer who is registered with the United States Patent and Trademark Organization.” Registration with the USPTO is only required for patent litigation, not trademarks. A correction has been made.

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