New York Patent Attorneys & Lawyers

Legal Tips and Information

Hiring a Patent Attorney

For many startups, the value of the business is dependent on the value of their Intellectual Property, and more specifically, the value of their patentable technologies.  In the growth stage, startups are often underdeveloped in a number of areas: they may have few employees (and a non-existent managerial culture), they may lack real property assets and equipment, and they may have a minimal brand presence.  At such an early stage, ownership of a patentable technology or process can come to represent the true value of the business.

If your startup owns what you believe to be a patentable technology or process, it is highly recommended that you seek the services of a qualified patent attorney.

Why Hire a Specialized Patent Attorney?

It is not strictly necessary that you hire a patent attorney in order to submit a patent application with the United States Patent and Trademark Office (USPTO).  In fact, both non-attorneys and attorneys not specialized in patent law (e.g. attorneys that have not passed the patent BAR) are entitled to draft and submit patent applications with the USPTO.

Fundamentally, it is a risky proposition to pursue a patent application without the aid of an attorney.  Laypeople are much more likely to make mistakes – both minor and significant – when submitting patent applications.  The regulation surrounding patent applications is surprisingly complex, and without the guidance of a patent attorney, you may have your application rejected for reasons that are incidental to the actual technology or process itself.

To avoid incidental rejection, it is critical that you hire a qualified attorney.  Does a specialized patent attorney make sense, however?

Certainly, a generalist startup attorney with some experience handling patent applications may be “good enough” for your purposes, but if intellectual property is the foundation of your business, it is much more important that you minimize the risk of having your patent application rejected.  When intellectual property forms the core of your value proposition, then you should take additional steps to protect such property – in this case, by hiring an attorney specialized in patent law.

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Submitting a winning patent application requires legal instincts informed by industry experience.  You will have to include details about your invention (technology or process), charts, drawings, photographs, and more.  The best patent attorneys in NYC will advise on how best to formulate the application to maximize the possibility of success.

As great patent applications are girded by genuine technical expertise, it is helpful to hire a patent attorney with industry knowledge and a technical background related to the intellectual property at-issue.  For example, if you are attempting to patent an automotive technology, look for a patent attorney who has worked with the automotive industry in the past, or who has a related technical degree.

Protecting Against Infringement

Once your patent has been granted, your patent-related legal work has just begun.  Patent infringement is a civil action, which – in the intellectual property litigation context – means that no one is looking out for your patent rights except for you and your team.  If another startup infringes on your patent, the government will not pursue legal action on your behalf.  The responsibility of identifying the infringing party and pursuing legal action against said party rests entirely on the shoulders of you and your team.

Litigation Experience is Important

To successfully protect your startup from current and potential infringement, you’ll want to work with a patent attorney who has experience on the litigation-side.  As you browse UpCounsel listings for a patent lawyer in NYC, you’ll likely find a lot of patent lawyers with experience drafting and submitting patent applications with the USPTO.  This type of “transactional” experience is useful, of course, but is not enough when it comes to protecting against infringement.

Infringement comes under the litigation umbrella.  Your attorney should therefore be experienced in patent litigation and every phase of the litigation process.  He or she should be proficient in: a) working with the potentially infringing party to come to an out-of-court compromise that is satisfactory to you and your team; b) filing a lawsuit in the event that negotiations break down; and c) pursuing the lawsuit to its natural end against the infringing party.

Contractual Protection of IP Rights

Patent protection can be eroded over the course of time if you do not include IP-protective provisions in your contracts – including but not limited to employee and independent contractor agreements, sale of goods contracts, service contracts, and other agreements.

It is important that you work closely with your attorney to draft contracts that are protective of your patent rights.  For example, you’ll likely want to include a provision in your employment and contractor agreements that assigns ownership of the work-product created by employees and independent contractors to the company.  Without this provision, there could be issues with “pieces” of your intellectual property being infringed later on, after the employees/contractors have left the company.

Most companies also include some form of a confidentiality or non-disclosure agreement to ensure that trade secrets, future research and development, and other related intellectual property concerns are not revealed to competitors (and the public at-large).  There is no right or entitlement associated with this type of information.  If such information were to be leaked without a confidentiality agreement in place, the information leak could hurt your startup and you would have no legal reprieve.

Keeping Costs Down

One of the most common problems encountered by startups is that they overspend on legal fees, especially with regard to submitting patent applications.  It’s really no surprise that some startups patent applications can lead to excessive legal fees: intellectual property can be extremely valuable, so startups are usually willing to spend quite a bit to ensure that everything goes smoothly, and the patent application process is complex and often quite difficult for outsiders to understand.  Further, USPTO denial of an application may seem arbitrary.

Startups need not waste so much money early on, however.  Your patent law goals can be accomplished at a lower cost, so long as you take into account certain obvious cost-cutting measures.

Submit All Your Strongest Claims

When submitting your USPTO patent application, make sure to include all your strongest patent claims.  You can make up to 20 patent claims with a single filing, so don’t waste the opportunity.  If you fail to make all the necessary claims, you will have to spend additional funds on another filing (and your original filing may fail).

Avoid Patenting Everything

Though you may feel that your startup has multiple patentable technologies/processes, try to resist the urge to patent everything if your budget is limited.  Work with your patent lawyer to submit patent applications for those technologies and processes that are most valuable to your startup’s value proposition.  Attempting to patent minor technologies and processes can quickly escalate legal costs to excessive levels.

Be Careful About Filing Patents in Foreign Countries

Submitting patent applications in foreign countries can further escalate costs if you’re not careful.  The process may require specialized knowledge of a foreign patent regulation scheme, and may therefore require that you hire additional attorneys with experience handling patent applications in those particular countries.

Even if you are granted a patent in a foreign country, the fees may be prohibitive and enforcement may be rather lax.  Filing for patents in foreign countries is a strategy that’s generally discouraged until your startup has become truly global.

Alternatively, filing for a patent in a particular country may be sensible early on if you are specifically targeting that foreign market.