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Finding an IP expert: What to look for when searching for an IP expert that will help you build your US IP Portfolio

Disclaimer: The information provided in this factsheet is meant as an educational resource only and should not be construed as legal advice.

Finding the right IP expert will depend on several factors, such as fit, experience, expertise, strategy, and price.  

  1. Interview and adjudicate the experts like you would when hiring an employee.
    • Speak with different candidates about their process, philosophy, and what they value in building a portfolio. Find someone who fits your style and needs.
    • Communicate your IP and corporate goals, and how they align. Why are you building a US portfolio? What do YOU value in growing one?
  2. Questions to ask yourself or the expert before hiring:
    • Are you looking for someone based in Canada or the US?
      • You don’t have to go with an American-only solution
      • Many Canadian firms and agents can still file your US intellectual property and represent you at the USPTO.
      • If, however, you find yourself in legal matters (e.g. litigation) you will want to hire a US patent attorney with relevant trial experience.
      • Generally, the firm that handles the filings and prosecution is not the firm that handles the litigation. Therefore you can work with a Canadian firm to handle the filings and prosecution and a US firm for litigation.
    • What is their understanding of your inventions and objectives?
    • Is this their area of expertise?
    • What is their previous experience working in this field? What successes have they had?
    • What recent experience do they have in building similar-sized portfolios in the US for Canadian companies?
    • Can they offer insight and portfolio management as your trusted IP advisor? Will they review inventions to help determine if patent protection is the best route?
      • Or, will they simply draft and file what you tell them to?
    • Can they help develop the right culture for further innovation?
    • Will they be proactive or reactive?
    • Will they help you develop a comprehensive IP strategy? One that includes more than patents?
    • Can they navigate the IP landscape to decrease/defer costs or speed up examination where needed? How will they maximize the value from your budgeted funds?
  3. Budget Considerations
    • It is important to determine whether the experts that you are considering have fees that align with your budget.
      • Be sure to ask the firm representative or agent that you are consulting, what their fee and fee structure are, or request a quote with a breakdown of the associated fees.
      • Hourly fee structures mean that you are billed based on an hourly rate. These are common with big law firms, some are in the range of 600-1000$ an hour.
      • Fixed fee structures mean that you are billed based on the work that is being performed. Fixed fee structures can help keep costs down, and generally help to avoid unexpected costs.
      • Using a prestigious law firm that has worked with some of the biggest brands out there may not always make the most sense for a startup.
        • These firms can be more expensive, and may not always offer the best ratio of added value to cost for companies that are just starting to build a portfolio.
        • Their services high price tag may be of more value to those seeking IP enforcement in a courtroom (litigation), rather than those seeking IP protection with a patent office (prosecution).
      • IP costs can spiral out of control if not properly handled. When starting out, it may make sense to seek fixed costs rather than hourly rates, which can quickly add up.
      • Ultimately, who you decide to work with is a business decision based on what makes sense for your company.

Example 1: Felix’s company has developed an innovative way to navigate multiple social media apps at once, which is currently being used as a trade secret. He is certain he will be the new king of social media, and thus he only wants to be associated with “the best”. Felix finds the name of the law firm that handled the biggest social media company’s IPO and reaches out to their IP department. He meets with a Senior Partner who says he can begin drafting a patent application for Felix’s company, and Felix immediately approves for the partner to start work turning his trade secret into patents. Two months later a patent application is filed, and Felix receives his invoice, for 25k. Incredulous, Felix realizes he has blown a significant part of his budget on one application. The application was high quality, but he overpaid for it AND he is still missing an IP strategy, so has no idea where to go from here. Furthermore, it turns out that the big law firm may have handled the IPO for that big social media company, but they weren’t even the firm that drafted their patents. A lack of research and questions have proven quite costly. Felix goes on to meet with an IP manager recommended to him by a friend and hires him after some heavy vetting. The IP manager works closely with Felix over the next few weeks and months to help develop a long term comprehensive IP strategy that includes a multi-year budget and filing targets, along with an invention capturing and adjudication process. The IP manager also connects Felix with reasonably priced patent agents who specialize in social and digital media. Some final salt in the wounds of Felix, it is determined that the patent application filed by Biglaw will be next to impossible to enforce if it ever becomes an issued patent, and it is retroactively determined that it should have remained a trade secret after all.

Key considerations for Canadian companies:

Additional information:

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