Home > IP Topics Index > Establishing and Operating Technology Transfer Offices > How to Select and Work with Patent Counsel > Editor's Summary, Implications and Best Practices

Public sector technology transfer offices are in the business of moving technology from research and development to eventual commercialization, to advance their missions of serving the greater public good. IP management is integral to this process, and integral to IP management is patenting. As this chapter clearly and concisely instructs, maximal captured value for public sector technologies will be greatly impacted by the quality and scope of the patent coverage. For example, if a patent is drafted poorly or does not provide adequate coverage for the technology, licensing opportunities may either be lost or significantly devalued. The costs associated with inadequately drafted patents mean that it is important for a technology transfer office to rationally select a patent attorney such that his/her work will enhance the institution’s prospects for obtaining optimal licensing arrangements.

Throughout the process, from selection to hiring to ongoing interactions, it is important for the technology transfer office and the patent counsel to develop and maintain a good working relationship. Of course, central to this relationship is ensuring that patent counsel can prepare and prosecute patent applications in a manner that achieves positive results in a cost-effective fashion. The chapter presents the steps in this complex process, and the responsibilities that both counsel and technology transfer office should assume. Yet, it is important to recognize that patent attorneys can also provide general counseling, resolve inventorship issues, provide licensing and agreement support, and resolve disputes. By selecting qualified patent counsel and developing a good working relationship, technology transfer offices can develop a resource that will ease their workload and facilitate their missions. This choice of patent counsel is therefore essential for operating a viable technology transfer office and should be approached thoughtfully. The chapter suggests some helpful guidelines for making this sort of selection.

In the U. S., patent attorneys must be registered with the U. S. Patent and Trademark Office (“PTO”) in order to practice before that governmental agency. To obtain such registration, patent attorneys must pass a written examination given by the PTO. In addition, patent attorneys must have a degree in science or engineering or a sizable amount of course work in those areas and also have admission to a state bar (also obtained via written examination). Evaluation of potential patent attorneys will be the first step for the technology transfer office to take in the selection process. There are several factors that should be carefully considered and weighed:

• Size of the Attorney’s Firm: due to its resources and personnel, a large law firm is generally able to handle most any legal problem that confronts a technology transfer office. On the other hand, smaller firms might have the advantage of lower cost, while still having attorneys with the skills needed to serve the technology transfer office.
• Scope of the Attorney’s Legal Experience and Capabilities: the technology transfer office should consider what types of patents the attorney has prepared and the files of issued patents he/she has prosecuted, and, in addition, whether the attorney has experience in other areas, such as litigation, interferences, licensing, and counseling.
• The Attorney’s Experience with Academic Institutions: though often not carefully considered prior to hiring, attorneys should have a background and be comfortable working with public sector institutions, including technology transfer offices and faculty, and also be acquainted with procedures used by technology transfer offices to control costs, for example, the Patent Cooperation Treaty procedure for foreign filing to delay payment of national filing fees.
• The Attorney’s Technological Background; for example, a medical center, may only need an attorney with a biotechnology or medical background, or an agricultural research institution would require the attorney to have a background in agronomy, crop management or plant breeding.
• The Firm’s Location; which is a balance of proximity, convenience and required expertise. Hence, if practicable, a local attorney will fulfill these requirements, but often only a more remote firm can supply the type of attorney that the technology transfer office truly needs.

The chapter then goes on to point out that after a patent attorney is selected, aspects of the relationship between the technology transfer office and the attorney need to be clarified and maintained. Several examples are discussed. From the outset, determining how work will be allocated is important. Generally, the less work that is sent to the attorney, the lower the technology transfer office’s legal fees. Still, the more work the technology transfer office retains for itself, the less time its staff will have for other matters. It is therefore important for the technology transfer office to assess how its resources are to be utilized and then to distribute its workload accordingly. An example of work that either the technology transfer office, or the attorney, might perform would be initial determinations of patentability for an invention. Another important aspect of the relationship to be clarified early on, and then assiduously maintained, is the lawyer-client relationship. What this means is that the technology transfer office is the client … and not individual scientists or other staff. The technology transfer office should educate its scientists and staff as to this simple, yet easily misunderstood, distinction.

Another critical aspect of the relationship between the patent attorney and the technology transfer office concerns payment for services. The chapter presents several possible methods and schedules for payment, and also cautions against certain practices in this regard. For example, a letter of retainer can, among other things, specify the billing procedures, such as fixed fees, hourly billing rates or equity combinations. Another feature of the retainer letter will be a specification of the bill content: an acceptable bill will include, on a daily basis, an indication of which attorney worked on a particular project, the amount of time spent daily on that project, and what that work involved. This will make clear the services for which the technology transfer office is being charged. However, block bills containing a narrative of all work done on a particular project without specifying which attorney did that work, how much time that attorney spent on a particular task, and when that task was done should not be accepted.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• Support the legal profession in your country. This includes legal education and also the establishment and maintenance of a bar.
• Support the establishment of a patent office in your country, and when or if already in place, provide for its maintenance, both administratively and fiscally.
• Support legislation for patent and intellectual property statutes and regulations, and, critically, provide support for education about and enforcement of these laws.

For Senior Management (university president, R&D manager, etc)

• Understand that it will be necessary for your institution to work with outside legal counsel in order to advance its mission. This means working to raise awareness within your institution, for example among scientists, of the necessity of understanding the importance of IP management and therefore the responsibility to work with patent counsel on IP and patenting issues.
• Provide support to your institution’s technology transfer office, so that they can efficiently, and cost-effectively, interface with external patent counsel. Remember that the relationship between the technology transfer office and external counsel is synergistic, with each party contributing.

For Scientists

• Patent counsel will need to work closely with you in order to evaluate the results of your research for possible inventions and then to proceed with patent applications when appropriate. Therefore, endeavor to bridge the professional gap between yourself (a research scientist) and counsel (an attorney at law).
• Take time to provide counsel with whatever information, results and documentation needed to either manage IP or facilitate patent applications, prosecutions or litigations.
• Build a relationship with your technology transfer office. They will serve as the interface between you and patent counsel, and manage the dynamics of the relationship.

For Technology Transfer Officers

• It will be your responsibility to select patent counsel for your institution. This will necessarily involve assessing your needs, and then matching this to the best possible candidates.
• You should define the relationship between the technology transfer office and patent counsel, for example the specifics of task allocation, while all the time remaining aware of cost-efficiency.
• Your office will be the actual client of the patent counsel, and therefore the interface between patent counsel and all others within your institution.
• Remember to foster positive relationships between patent counsel, your office and also the administrators and scientists at your institution. By defining and managing these relationships, your interactions with patent counsel will realize a maximum benefit at a reasonable cost.