7 Questions to Ask Before Hiring an IP Attorney

May 12, 2022

An Intellectual Property (IP) attorney is an essential partner from the beginning of your startup journey and throughout the operation of a well-established business. You will have to make IP-related business decisions specific to your company. Based on factors like the problem that your company aims to solve, your business strategy, your competitors, etc., rigorously protecting your IP rights may be viewed as important to the business. Further, depending on your time to market, protecting IP rights might be considered to be urgent to the business. In most cases, protecting your company’s IP should be viewed as both important AND urgent to the business. 

Selecting an IP attorney and law firm should be a deliberate decision with the necessary due diligence. Your relationship with your IP attorney will be a long-term one, and the consequences of making a poor selection could prove disastrous for your business.

Below are seven high-level questions you should consider asking your potential IP attorney as part of this due diligence.  

  1. Can you handle all my company’s IP needs?

The “IP umbrella” covers several aspects of a business/product. The most common needs arise in the following areas.

  • Patents: Protect inventions, e.g., a widget, process performed by the widget, manufacturing the widget, etc.
  • Trademarks: Protect identification, e.g., a brand name or logo used to sell/market the widget
  • Copyrights: Protect creative works, e.g., drawings, articles, etc.
  • Trade Secrets: Protect the information that can provide a competitive advantage

While at the outsetthe IP services sought may be to “file” or “register” your IP, as your business grows, other IP services will be required, such as freedom to operate (FTO) analysis, infringement analysis, trademark clearance, etc. 

It is most often advantageous to have a single IP firm handle all aspects of IP. For example, at Cantor Colburn, a full-service IP law firm, your client relationship team/manager will plan and implement a comprehensive strategy tailored to all aspects depending on your company’s specific situation.

  1. Have you worked on a similar type of case/matter before?

While your startup’s IP is unique in itself (which is what makes it valuable!), you want to make sure that you are represented by an attorney with experience in the technical area or target market of your IP. For example, to patent an innovative machine learning solution, you need a law firm with a specialized practice group that has patent attorneys with computer science/engineering background and experience not only filing, but also successfully obtaining such patents issued should be preferred. Attorneys with the right background can often save you time and money and get the optimal result.

Ask for specific examples and why those may be considered similar to your situation.

Follow-up, in this case, includes asking which specific attorney(s) will be handling your matter and asking about their particular backgrounds and experiences.

  1. Would you have any conflicts of interest representing my company? What happens if a conflict arises in the future?

This can be a good follow-up to the previous question. Note that attorneys have an obligation to advise you of any conflicts of interest, even without your asking. For example, a conflict exists if the attorney/law firm has one of your potential competitors as an existing client, in turn limiting the attorney/firm’s ability to represent you (and/or your competitor). It may be a good idea to check how the firm might handle such a conflict that might arise in the future. For example, there could be a conflict of interest if your company branches out into a market in which the firm has an existing client.

  1. What is your philosophy for us working together?

Protecting your IP is not a “turn-key” project that you can completely outsource. Throughout the process, you will have to work hand-in-hand with your attorney, no matter what kind of IP - be it patents, trademarks, copyright, or other. So, it is imperative that you and your attorney work well together. Open, timely, and clear communication in plain English (or your preferred language, except legalese) is key, be it in person, or by email, video-conference, or phone call. Further, you will frequently have to communicate with paralegals and other administrative staff at the firm. Ask about the team that will be entrusted to work with your IP. 

  1. What are the fees? Do you charge on an hourly basis or a flat-fee basis?

Your IP attorneys are going to build your IP portfolio - your startup’s intangible assets. 

The invoice should not be a shock, so ask for upfront estimates. Understand if the invoices you will be receiving will be based on a flat for service or an hourly charge. If billed hourly, in what increments is time billed? 

While it may not be possible to give you a precise quote, you should have a good understanding of the potential price tag.

  1. What if I need help internationally? 

In today’s global marketplace, this may actually be “Can you help internationally?” IP rights are limited to the jurisdictions (i.e., countries) in which they are applied. For example, a U.S. patent, or a U.S. trademark, can only be enforceable in the U.S., not in Europe or anywhere outside of the U.S., and vice versa.  

At Cantor Colburn, our attorneys will understand your business strategy and devise your specific IP plan accordingly. For example, your company may be planning to sell, manufacture, distribute, or conduct research outside the U.S.  We can determine the right mix of IP to prevent your competitors from circumventing your IP assets. In addition, your startup’s exit strategy may be getting acquired. In this case, it can be important to cover potential jurisdictions important to your acquirer. 

  1. Can you provide any statistics about your practice’s success rate?

This can be particularly important for patent matters. The time for a patent application turning into an issued patent depends on several factors, and the nature of the innovation itself plays an important role. However, the quality of your patent application draft and your attorney’s advocacy skill can also play a huge role and, in some cases, can affect how much time and money has to be spent before the patent is issued. 

You can also look up statistics specific to your startup’s technology area. (My colleagues and I are pleased to rank #3 in the USPTO Computer Architecture, Software, and Information Security Technology Center. ) 

Undoubtedly, you and your attorney will be working closely over several important matters over time. You want to be with someone who makes you feel comfortable and valued along this journey while providing you candid and wise IP counsel. Your attorney should recognize and provide you with different IP-related options for your specific situation. The above questions are certainly not a way to judge a potential IP attorney entirely; however, they can assist in obtaining data points. Was the attorney prepared? Did s/he ask questions about your startup’s goals and vision? What were the next steps suggested? Did s/he send you an email or call following the meeting?

These data points indicate your potential IP attorney’s commitment, responsiveness, aptitude, and attitude.

Tanmay Dharmadhikari is a Computer Scientist, Patent Attorney, and Partner at Cantor Colburn LLP. 

May 12, 2022
Hilton Thompson