Why you get poor service from your patent attorney – and what we can do about it

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Why you get poor service from your patent attorney – and what we can do about it

Why you get poor service from your patent attorney – and what we can do about it

In our last blog, we looked at the basics of IP strategy, particularly IP Protection and IP Risk. Getting this right is crucial to a tech start-up or SME that is looking to raise capital and/or exit – we used a fictional organisation, InnerCore Robotics Ltd.

Read it here

Examining the frustrations of Small and Medium-Sized Enterprises (SMEs) like InnerCore – and how they interact with an IP provider – can show why, even when they understand why having an IP strategy is important and have done good ground work, they are not getting good service from their patent attorney, trade mark attorney or other provider.

So let’s take a look at the issues and see how InnerCore can solve them and choose the right IP provider.

bad service 2 people meeting

Global organisations need entirely different IP support to SMEs

There is a vast difference between global tech companies and SMEs in the way they are supported for IP, as we will explore below.  Because of that, SMEs need an entirely different service from their patent attorney than a global tech company does.

The truth is that most traditional patent attorney firms are set up to deal with global tech businesses, whether they realise it or not. That’s because it’s where they make most of their money, and where they make the easiest money.

Generally, patent firms tend to want big tech clients rather than SMEs because the work is easier for them to do and it provides a high volume of guaranteed work that they can plan against.  Often, SMEs are considered to be a bit of a pain.  The perception is that they require more ‘hand-holding’, are considered more of a credit risk and more likely to complain about the service.

It’s not surprising that traditional patent firms’ systems, processes and personnel are biased toward that work.  This might not be an intentional bias and might not even be recognised by the firms themselves, but from the outside it can be seen.

It means SMEs are often sold a product that is not designed for them.

Global Tech Clients

Global Tech Clients

Consider the Global Tech Client in diagram one – this could be any global tech giant we know (like Apple, for example) but could also be less well-known business that is investing heavily in patents. The leadership of that organisation is responsible for determining corporate strategy and they communicate that strategy internally, in this case to the IP team.  This is done in the language of business and will include metrics and outcomes based on commercial success.

The Global Tech Client also has their own in-house IP department, with IP professionals who understand the commercial impact of IP, the contracts, the metrics they are looking for, the budget at their disposal and all the commercial factors. This team will decide what the IP of the company needs to look like to fulfil the commercial strategy delivered to them by leadership. 

 They will answer questions like:

– What IP do we have?

– What IP is commercially important?

– Where do we need patents, trademarks or other rights?

– What competitors are we worried about, and what is their IP?

– What are the internal and external IP risks we need to offset?

– What is our budget?

 

The IP team can then translate the answers to those questions into what is needed in terms of IP support and engage external providers (Patent Attorney, Trademark Attorney and IP Solicitor).  These conversations are done in IP jargon (there’s a lot of it!) which both the internal IP team and the external IP providers are conversant in.

The IP team will receive the commercial strategy from the leadership. They will determine what’s required and how to create a patent portfolio to support that strategy. They will have a budget to work with and metrics to demonstrate progress. They convert the strategy into what patents are needed and what they will look like and will instruct a patent attorney to do the necessary work within those parameters.  They outsource.

The patent attorney talks to the internal team only as they do the work. This is comfortable for the patent attorney because they have an equivalent professional inside their client who understands all the jargon and what is needed. This is nice and easy ‘crank the handle’ work for them. It’s great for the big client, too.

What happens with an SME organisation?

But what of the SME, the Small to Medium Enterprise? Consider our company InnerCore Ltd. They invent and develop specialist prosthetics and are preparing the business for acquisition. They have determined that IP will be crucial to their business to maximise their commercial potential and protect their interests. However, they do not have an in-house IP team due to their size – they can’t really justify it.

 

IP Jargon diagram

 

Now, as we see in Diagram 2, the entire conversation becomes flooded with IP jargon because there is no internal IP expertise to translate for the leadership team.  Patent attorneys often use technical and legal jargon that might be challenging for non-specialists to grasp. Phrases like ‘prior art’, ‘claims’, ‘PCT’, ‘priority year’, ‘non-obviousness’ and ‘infringement are just some examples. While the global tech company leader can rely on their internal IP team to talk this language and translate and explain, InnerCore’s leadership will be directly exposed to it and left scratching their heads.

Simply put – InnerCore’s leaders, more often than not, don’t have a clue what the patent attorneys are talking about – and the patent attorneys are frequently frustrated that they are not being understood and that their clients don’t get it.

There is also a lack of strategic IP guidance. Big tech corporations have a dedicated IP team that develops an appropriate strategy covering IP Protection, IP Risk and IP Commercialisation and guides the business through the process. In contrast, InnerCore do not have the capability to do this and they cannot find it in an external patent attorney who is used to simply ‘doing patents’ without needing to understand the commercial context.

This causes increased stress levels and sleepless nights for InnerCore’s CEO when unclear deadlines keep popping up left, right and centre and she is asked to make decisions and give instructions on things she doesn’t understand!

The lack of an IP strategy can easily lead to high costs with unclear returns. Without a clear understanding of the IP strategy, InnerCore’s leaders feel they’re pouring money into a black hole without gaining tangible commercial benefits.

The leadership team know what they want commercially but need to figure out how it translates to actions for the attorney. There will be high volumes of long e-mails that cannot be understood, lots of deadlines requiring input and also lots of high-cost invoices that make no sense.

The patent attorneys are doing their job but they are still set up for the Global Tech Client.

This is a highly unsatisfactory relationship for the patent attorneys, too. They often say that SMEs are a pain and pose a high risk.

The answer lies in recruiting an IP provide like Matter IP that understand the needs of SMEs – one that sits in the crucial position between the leadership and legal teams – an in-house IP team for tech businesses that cannot justify employing someone in that role full time. For SME clients like InnerCore, this will provide the function of an IP team, converting commercial strategy to IP strategy, managing IP protection and risk and talking to all the external providers. They will be fluent in IP jargon, filtering and translating interactions with the attorney to get relevant information to the team. This saves time, reduces cost and ensures that value is generated from the IP spend.

This provides the right commercial benefits for InnerCore and will really help them raise capital and increase their valuation when the time comes for acquisition.

diagram of IP

Matter IP fills this role for many of its clients.  We sit as in-house counsel and can manage all of their IP needs as a single point of contact, as well as providing experienced patent attorneys if they’re needed.  We develop IP strategy and liaise with external advisers to drive cost savings and get quality work done so that clients get the commercial outcomes they’re looking.

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