What Is a Fractional Patent Attorney?

Companies have several options for obtaining patent counsel. They may retain an outside patent attorney when a particular need arises, employ an attorney as full-time in-house counsel, or use a fractional patent attorney. Although attorneys in all three roles may have similar knowledge of patent law, the nature of their relationships with the company can be quite different.

Traditional outside patent counsel is often engaged when a particular need arises. A company may have developed an invention to the point where it is ready to file a patent application, need advice concerning foreign patent protection, require assistance with the intellectual property provisions of an agreement, or become concerned about possible infringement. The work may be extensive, but the relationship tends to be matter-oriented. Once the application has been filed, the agreement completed, or the immediate problem resolved, counsel's involvement may decrease until another need arises.

An in-house patent attorney occupies a different position. Because the attorney is part of the company, he or she can become familiar with its technology, business objectives, resources, competitors, and longer-term plans. In-house counsel may become involved well before a patent application is ready to be filed, working with scientists and management as inventions develop and helping to identify approaches that may lead to more meaningful patent protection.

The role can extend well beyond patent prosecution. In-house patent counsel may participate in decisions concerning foreign protection, freedom to operate, licensing and collaboration agreements, protection of confidential information, relationships with business partners, and other matters in which intellectual property intersects with the company's scientific and commercial objectives.

The difficulty is that an experienced patent attorney capable of filling such a broad role can represent a substantial commitment. Smaller companies, particularly startups and companies with developing patent portfolios, may not be able to justify employing an experienced patent attorney on a full-time basis.

A fractional patent attorney provides an alternative. Rather than being retained only when a particular matter arises, fractional counsel maintains an ongoing relationship with the company, but on a part-time basis. The attorney can become familiar with the company's technology, objectives, and intellectual property portfolio and participate in decisions before they become urgent.

The fractional attorney does not necessarily perform all of the company's patent work. Depending on the arrangement, fractional counsel may prepare and prosecute applications directly, or may function primarily as an advisor, helping the company establish patent strategy and coordinating work performed by outside patent firms or other service providers.

Perhaps the most important difference is when the attorney becomes involved. Outside counsel who is contacted when an invention is ready to be patented generally must work with the invention as it then exists. An attorney who has been involved during development may be able to identify patent opportunities earlier, recognize potential freedom-to-operate concerns, anticipate problems with proposed agreements, and help guide development before changing direction becomes difficult or expensive.

Fractional patent counsel therefore occupies a position somewhere between conventional outside counsel and a full-time in-house patent attorney. The objective is not simply to obtain patent services on a part-time basis. It is to provide the continuity and strategic involvement of in-house patent counsel without requiring the company to maintain a full-time position.

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.