Does Your Company Need a Fractional Patent Attorney?

Not every company needs an in-house patent attorney. For many startups and smaller companies, the amount of patent work simply does not justify adding an experienced patent attorney as a full-time employee. At the same time, there may come a point at which relying entirely on outside counsel for individual patent matters is no longer the best approach.

The question is not simply how many patent applications a company files. A better question may be whether intellectual property issues have become sufficiently important to the company's business that someone should be thinking about them on a continuing basis.

One indication is that patent counsel is repeatedly being brought into matters after important decisions have already been made. Scientists may develop an invention and contact counsel only when they believe it is ready for patenting. Business personnel may negotiate a collaboration before asking an attorney to review its intellectual property provisions. A product may move well into development before anyone considers patents held by competitors. In each case, competent outside counsel may be able to address the immediate problem, but earlier involvement might have provided more options.

A growing patent portfolio can present another indication. As the number of inventions and patent applications increases, decisions concerning one matter may affect others. Which inventions justify foreign protection? Which aspects of a technology should be patented and which might be better maintained as trade secrets? Are several patent applications protecting parts of the same commercial product? Are important developments occurring that are not being captured by the company's existing patent filings? These questions are easier to address when someone is familiar with both the portfolio and the company's continuing technical and commercial objectives.

The same is true when a company begins entering into more collaborations, licenses, research agreements and other business relationships. Intellectual property provisions in these agreements can have consequences well beyond the particular transaction. Ownership of newly developed technology, rights to improvements, confidentiality obligations and licensing provisions can all affect the value of a company's intellectual property.

At some point, therefore, a company may need more than an attorney who is called when a particular problem arises. It may benefit from having patent counsel who understands the company's technology and business, communicates regularly with scientists and management, and participates in intellectual property decisions before they become urgent.

That does not necessarily mean that the company is ready to hire a full-time in-house patent attorney. An experienced patent attorney capable of advising on patent prosecution, scientific developments, agreements, freedom-to-operate issues and business strategy represents a substantial commitment, and many smaller companies simply do not have enough work to justify such a position.

This is the gap that a fractional patent attorney can fill. Fractional counsel can maintain an ongoing relationship with the company without becoming a full-time employee. Depending on the company's needs, the attorney may provide strategic advice, participate in invention and portfolio reviews, help establish filing and foreign-patent strategies, review intellectual property issues in business transactions, coordinate outside patent firms, or perform selected patent work directly.

The objective is not necessarily to replace outside patent counsel. A fractional patent attorney may work with existing outside firms and other specialists. The difference is that someone is continuously looking at the company's intellectual property from the company's perspective rather than considering each matter largely in isolation.

Disclaimer: This piece is provided for general informational purposes only and does not constitute legal advice. Patent issues are often complex and highly fact-specific, and no one should act on general information of this kind without consulting qualified patent counsel regarding the particular circumstances involved.