Home > Topics > Establishing and Operating Technology Transfer Offices > How to Hire an IP Attorney and Not Go Bankrupt > Editor's Summary, Implications and Best Practices

Hiring a lawyer to represent your IP interests can be complex and costly, but you are getting a valuable resource for your money. IP attorneys are especially valuable as a TTO is just getting established. A critical initial role of the lawyer should be to work closely with the TTO to develop an IP strategy that most effectively delivers benefits to the office. If your TTO strategy is ill conceived, the rest is redundant.

A wide-range of legal matters need to be addressed. These include the types of IP protection to be provided, when to apply trademarks and copyright, how much to rely on trade secrets, the development of contracts and agreements, license reviews, and negotiations support. The lawyer can also be used very effectively to think in highly innovative ways about how to capture value from an IP portfolio.

The legal relationship between a lawyer and a client is protected under a special set of legal rules that make up the concepts of “client confidentiality” and “legal privilege.” This umbrella of confidentiality and legal protection from disclosure is a very important part of the relationship. The importance of confidentiality and trust cannot be underestimated. Be sure to use the legal strength of attorney privilege to your advantage.

In establishing a TTO, it will be important to have the advice and assistance of counsel throughout the process, and then later, during the TTO operation as well. This will save much grief later on, because proper policies and procedures will be in place, permitting consistent and predictable operation of the TTO. Organization is key; a lawyer can help with establishing policy, guidelines and procedures. Any upfront investment will be well worth it.

In general when contemplating hiring an attorney, it is recommended to carefully consider the following:

• Hiring patent attorneys: Choose an attorney with a range of qualifications and specializations tailored to the nature of the invention portfolio. A chemical engineering background might be helpful for advising on a natural products patent, for example, whereas a background in biological engineering might prove better for handling a patent on a biolistic gun.
• Retaining general legal counsel: Find someone who knows the big picture but who understands the science of the invention and the client as well. Be guided by the attorney as to the big-picture issues.

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

• As a result of the growth in IP protection, more and more institutions are establishing technology transfer offices (TTOs). As a policy maker, it is critical for you to understand the relationship between fostering IP and technology transfer, and the necessity for IP capacity building throughout your nation’s institutions. As part of this, it is very important for everyone, from the top down, to understand the central role that legal counsel plays at every step, from establishing the TTO, to assisting in policy formation, to addressing actual day to day licensing and patenting questions.

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

• It is important to establish very early on the role for the technology transfer office (TTO) within your institution. You will play a critical role in making these early determinations. The TTO needs to be able to provide a comprehensive IP management without being overwhelmed with work and obligations. Hence, as senior university management, it will be part of your job to oversea how the TTO functions, and what role legal counsel will play.
• With regard to IP policy and guidelines, work with a lawyer to review and comment on this during the initial strategy development stage. This will be quite important, with likely long-range impact.

For Scientists

• The support of both administrators and scientists to the technology transfer offices is critical, especially in the first few months and years of its operation. Hence you, as a scientist, may need to interact with legal counsel. Your input will be very important, at all stages of the process.

For Technology Transfer Officers

• A critical initial role of the lawyer should be to work closely with the technology transfer offices (TTO) to develop an IP strategy that most effectively delivers benefits to the office. As a TTO officer, you will need to interact with lawyers, working together to formulate decisions on the goals and strategies of the office. This type of interaction is critical in that it will be crucial to the long-term success of the TTO.
• In your discussions with counsel, various issues will need to be sorted out. For example, determining the patenting policy for the TTO, what types of patent applications to file, how to prioritize inventions, and what types of IP rights protection may be available as a substitute for patenting.
• The lawyer can help you to build up a good portfolio of standard agreements and templates that can then be customized as needed and appropriate.
• Don’t patent everything that comes out of your institution! Use patent attorneys to help you evaluate the potential market for an invention, and then proceed to determine what should, and should not, be considered for patent protection.