There are a few useful services that make sense to me, but I don’t see many law firms providing to their clients. Most patent firms operate on a case by case basis, with some big-picture consulting every so often or when a problem arises. On a rare occasion, someone from the law firm may participate in brainstorming with the inventors or strategizing with the business managers. This is generally because of the obnoxious billing rates charged by partners or senior associates in a large firm.
Clients need a lot more than a case-by-case patent shop, especially growing companies developing a market. These small companies need someone who can help avoid some pitfalls, help build a business strategy that makes use of their IP assets, and directs their IP coverage to protectable and strategic areas. They need an IP manager who is intimately knowledgeable about their business.
Properly managing the IP portfolio requires that the patent professional be very knowledgeable about the client’s industry and business. The typical patent attorney working on a case by case basis may know the intricacies of one invention as explained by the inventor, but may have no idea about the entire product line of a company.
Typically, a case-by-case patent attorney views prior art searches as a huge liability, because if a detrimental reference is missed in the search, all the effort behind getting the patent, not to mention the other business investments surrounding the invention, could be in jeopardy. This mindset causes searches to be performed by third parties, so that the attorney will not be liable.
While not discounting the liability aspects of this issue, the client needs someone who has a good overview of the prior art. This can only be gained when the IP manager/patent attorney does the search himself/herself and understands the lay of the land as well as the inventors and business managers understand their side of the market.
No doubt, the liability aspect of doing searches is absolutely enormous, and every occasion must be made to document the extent and limits of the search, while emphasizing that no search is complete. Educating the client and having a written agreement on these points may or may not be sufficient.
When this roadblock is overcome, the bill-by-the-hour, case-by-case patent writer can turn into an extremely valuable part of the engineering and business management team.