Making Patent Protection a Goal in 2010

For both businesses as well as lawyers, 2009 is a year many of us would like to forget. Investor scandals, the heath care crisis, the credit crisis, market instability, and increases unemployment all led to a largely unproductive business year.
This year also saw for the first time a decrease in domestic patent application filings. Many businesses strapped-for-cash have opted not to seek the advise of counsel when it comes to protecting their business ideas. More problematic, these companies have become apathetic when it comes to patent protection. Many have viewed cases like In Re Bilski as a suggestion that patents are no longer worth what they once were. In addition, many industries like banking and e-commerce have simply come to a belief that the Patent Office doors are no longer open to them. This is all untrue on multiple levels.
For whatever the reason, this apathy has led many companies to abandon or greatly decrease their budgets for patent protection. Moreover, it has virtually eliminated most mainstream enforcement proceedings relating to patent and trademark rights. Instead, many companies have opted to simply allow competitors to trade off their ideas and goodwill instead of shelling out money to the lawyers.

The result is two fold. First, the pipeline of innovation has slowed such that when there is a market and economic rebound within the next 24 months (which yes, there certainly will be in some form) there will be a shortage of registered intellectual property in which to enforce against the competition. Second, as many companies have allowed infringement to occur for several months if not years, there will be a greater basis for affirmative defenses sounding in latches or acquiescence if you do finally sue.
Here are three realistic points regarding selection of patent counsel in 2010:
1. Choose the Right Firm
The proverbial idea of bigger is better no longer holds true. Hiring the New York or Washington DC firm is not the answer many secondary markets have just as good patent attorneys.
Also, the big patent firms have greatly decreases their number or attorneys and many of the better attorneys from these firms have left to set up smaller boutique practices within the past year. In addition, many of the larger firms are charging more for patent applications than others. Many others are charging high rates for patent applications, because their overall volume of patent filings are down. Realize this and you are already far ahead of the game.
Look for a balance an attorney who wants to be your patent draftsman who has some experience, will work with you on pricing, and will not nickel and dime you for the benefit of a larger firm with high overhead costs. Look for the team player.
2. Look toward Flat Fee Patent Application Filings
Patent application preparation and filing can be done under a flat fee based largely upon the technology subject matter. Patent lawyers who know what they are doing can draft patents based upon a pre-set budget. Moreover, if there are several patents in the subject matter which will lend to the same background of the invention and/or specification an across the board discount may apply which can lead to greater value for the company and more patent protection down the road.
The key is recognizing that preparing several patents in a technology field at the same time can increase the number of patents in your portfolio while at the same time creating a more effective per patent filing end cost. Also, realizing that paying more up front may lead to a better bottom line is important. Planning and budgeting on your part and effective communication with patent counsel - may end up creating more end value on both sides of the table.
3. Bargain Basement is not the Answer
There is a wise old statement that I have used a lot in 2009: you get what you pay for. This certainly applies for pricing for patent applications. I have heard many a potential client call and say I talked to another attorney in town and he is willing to do it for half your fee. I have also heard a lot of start up companies talk about going to invention disclosure companies, instead of a traditional firm, because of an advertised price on a website.
Remember always that cheapest isnt always best. Many of those same folks who one year ago called and said they found someone cheaper went with those groups and then late came back to me after spending lots of money on hidden costs and failed promises. This caused the end costs for their patent protection to be higher than if they had gone with me in the first place.
With decreased budgets businesses cannot afford to prepare two patent applications, one with the cheapest firm and the other with the firm that knew what it was doing. There are certainly a higher number of patent attorneys out there that say they can help you just dont be fooled by low end pitches.
You dont go to 10 doctors and say, I dont care about how good you perform open heart surgery, are you the cheapest? and then go with the cheapest cardiac surgeon in town. Think about that next time you hire your patent lawyer.
Conclusion:
All market indicators suggest 2010 is going to be somewhat better than 2009. Lets hope so. Lets also pray that many of the lessons learned in 2009 will lead to a more productive and better business year in 2010. That being said, dont forget that innovation is what drives this country and without adequate patent protection, those market drivers will not be there to create a competitive advantage when things do finally get better.
ABOUT THE AUTHOR: Robert H. Thornburg
Robert H. Thornburg is a Miami Patent Attorney who assists technology start-ups, inventors, entrepreneurs and small to mid-sized companies realize the value of their ideas. Robert received his B.S. in Chemical Engineering, cum laude, from the University of Notre Dame, his J.D., with honors, from the University of Florida, and his L.L.M. in Intellectual Property Law, with honors, from The John Mashall Law School in Chicago. While at Florida Law, Robert served as the Editor-in-Chief of the Journal of Technology Law & Policy, Vice Chair of the Justice Campbell Thornal Moot Court Board, and President of the Florida Intellectual Property Law Association.
Robert is the vice chair of the IP committee of the Florida Bar Business Law Section. He is the past chair of the section's computer law committee. He is the Secretary of the Intellectual Property Law Association of Florida. Recently, he was selected as one of the "40 under 40 Outstanding Lawyers of Miami-Dade".