Patent Attorney Services After First To File. WHAT to File?

Throw a piece of meat to the lions, and moments later, the meat is gone.

Throw an invention to patent attorneys, and moments later, a patent application is filed.

OK, so perhaps the analogy is a little extreme, but it goes to the point that lions are hard-wired to eat meat, and patent attorneys are hard wired to draft, file and prosecute patent applications.

There’s no need to understand where the next piece of meat (or next invention) is coming from, just get the patent filed and hope for the next invention to be thrown over the fence. Period.

While we can’t expect lions to learn how to anticipate the future, we can expect intelligent patent attorneys to do so.

In the new First To File era in the US, attorneys should be the “last step to filing”, and here’s why.

My earlier mention of patent attorneys being hard-wired to file patents refers to the age-old practice of responding to a client’s request to file and prosecute a patent application.

When the client explicitly says “I want a patent for this invention”, the attorney obediently files the application. Counsel has met its obligation, and everybody’s happy.

Or are they?

A properly filed patent application establishes the metes and bounds of the invention, and the client has, or hopefully will have, a patent. The benefit of the bargain has been realized by both parties (and the check cleared the bank).

However, the elephant in the room is the client’s implicit desire not for a “patent”, but for a mechanism to deliver superior market position, protect competitive market share, and to create increased shareholder value. They believe the “patent” is their ticket.

Just as most of society wrongly considers doctors as “gods”, many patent clients wrongly think that patent attorneys will help them achieve these business objectives simply by filing a patent.

To be fair, patent attorneys are not being hired to study the client’s market, nor their competitive position within the market. They are not hired to develop the client’s internal IP budget, nor to help the company strategically develop an IP portfolio that could boost exit value. Such an engagement could be fraught with conflicts and confusion.

Unless attorneys make clear the limited and narrow scope of their services, and unless and until clients become more IP-savvy, clients will continue to incorrectly assume that all is fine in their Patent La-La Land; nothing is further from the truth.

So where’s the “middle-ground” – that logical bridge that connects informed clients with informed patent attorneys? That bridge that increases the value of legal services, and helps clients realize their strategic business objectives, not just their patent objectives.


That’s it. That’s the bridge. Simple. Done.

OK, maybe not so simple. IP strategy, or in the current context, “Patent Strategy” is nevertheless foundational to mutually beneficial patent attorney / inventor client engagements.

Why should clients care about IP Strategy? By expanding the strategic underpinnings of their “invention”, clients thereby:

  1. Establish a broader claims base helping secure future market expansion;
  2. Adequately disclose inventions (even if not claimed) that erodes competitors’ future patent landscape,
  3. Increase their long-term shareholder value through relevant portfolio expansion.

The tactical approach to patent prosecution typically starts with the attorney’s acquisition of “all information” related to an invention, followed by myopically drafting the application with claims establishing the metes and bounds of the invention.

I say myopically because despite what many attorneys would believe, they are not trained to, nor rarely look beyond the strict perimeter of the invention.

Protecting an invention using this arcane process is graphically represented in the “BEFORE IP STRATEGY” illustration below, wherein the metes and bounds of the invention are properly defined, claimed and granted.

On the other hand, what most clients inherently want, is not to simply “get a patent”, but to create a defensible or enforceable techno-legal position consistent with the company’s IP strategy.

Predictably, a client’s IP strategy may fall into one of the following examples:

  • Protect our “one shot wonder” for an infomercial product (the pocket fisherman and rotisserie inventor, Ron Popeil);
  • Enhance exit value by creating a defensible portfolio (VC-funded and growth companies); or
  • Capture and maintain long-term market dominance (Intel strategy), creating a patent chain, and posturing an IP portfolio for future enforcement.

Do you, as their attorney, even investigate their corporate IP strategy prior to preparing a new application? And, since you’re getting their patent business, do you really care what their answer is?

By asking and answering these questions, a broader patent strategy can be quickly developed. In the “AFTER IP STRATEGY” illustration below, it is readily evident that the “metes and bounds” of the original invention have been strategically expanded dramatically. In the example, the description or claims on the additional landscape may be either incorporated into the current application, or more likely, covered in concurrent or sequential applications that, taken together, begin to deliver the IP robustly supporting the overarching corporate strategy.

OK, so we know what’s in it for the client – broader and more comprehensive claims, creating a larger footprint in both the current and projected future IP landscape.

But what’s in it for the patent attorney?

Providing in-house IP strategy (or outsourcing IP strategy as you do patent searches):

  • Increases overall scope and quality of legal services;
  • Clearly generates a higher patent volume and increased revenue;
  • Reflects the attorney’s understanding of the importance of overarching patent strategy that supports the corporate business strategy.

The Strategic Process of IP Portfolio Development generally follows the sequence:

  1. Immerse in the essence of the corporate strategy (corporate managers should be able to articulate their strategy)
  2. Within that context, first evaluate the current invention against the client’s current IP assets;
  3. Evaluate the competitive perimeter of the invention: competitors’ IP, technology and product trends, i.e: white space, density, average patent age, competitors;
  4. Extract marketing, product and technology concepts from management for consideration as additional IP (invention mining);
  5. Craft a prioritized and scheduled multi-patent strategy, recommend an IP budget;
  6. Draft comprehensive background and patent specification that educates examiners as to the enormity of the unsolved problems (that is, until the present invention);
  7. Draft embodiments supporting primary claims, and disclose and claim some perimeter IP. The embodiments should extend beyond the original invention, anticipate trends, anticipate competitive response, and capture additional IP real estate. This step could incorporate invent-on-demand recommendations;
  8. (LAST) File the application(s).

Steps 1 through 6 (sometimes 7) define the domain of an IP Strategist. In no uncertain terms, IP strategy drives patent investment and development, or at least it should.

And, unless the patent application has to be filed before some arbitrary deadline, such as a trade show presentation, steps 1 through 6 should not take more than an additional 4-6 weeks prior to coming back to the original filing request.

Whether IP strategy is conducted by the attorney separate and apart from patent drafting, of whether it’s performed by an IP strategist is incidental, provided of course that the service provider has the business, marketing, budgeting, or patent analysis expertise to build the foundation prior to patent drafting and filing.

In my opinion, most attorneys don’t have or even want to have these skills. And from a time-based revenue perspective, these services generally fetch less than attorney partner or senior associate rates anyway.


IP Strategists are specialized consultants who have demonstrated expertise in BOTH corporate business development, AND patent and trademark development. They are the value-added bridge between clients and their patent attorneys.

IP strategists ensure that clients do not waste money on patents and trademarks that do not align with their core business goals, and help them develop high value IP that does. The strategic process also helps clients understand the difference and value between developing defensive, or offensive IP strategies.

I can now hear the attorney howls “the LAST thing we need is someone to tell our client they don’t need a patent!”

In the interest of full disclosure, I am a patent strategist, and except for independent inventors who are pursuing a cockamamie idea that has no realistic chance of commercial success, compared to the client’s original patent interest, I have been successful in doubling the number of patents my clients ultimately pursue 100% of the time. What do my clients get?

  • Competitive positioning: Check.
  • Expanded portfolio and enhanced shareholder value: Check.
  • Patents pursued only on commercially valuable inventions: Check.

As a relevant illustrative example, starting with one initial concept for a novel weight loss system, applying these “out of the box” principles expanded the IP landscape. The startup now has patents pending on ten discrete inventions.

But, I’m also an accomplished inventor, and I inherently “invent on demand” after understanding the client’s space (referring to Steps 1 through 3 above). New or derivative inventions are simply assigned to the client.

As a serial entrepreneur who’s built and exited companies, my decades in high tech business start up and patent analytics gives me an authoritative perspective on patent centric competitive positioning.

The expertise of other patent strategists lies in legal strategy, identifying high-growth market segments and the market players, or laying a course for enforcement or licensing.

Still others are deeply seasoned within industry verticals, such as medical devices or semiconductors, both extremely dense and highly competitive fields.

Keep in mind some statistics: There are about 25,000 US patent attorneys filing about 500,000 applications annually (roughly a 50/50 split on US origin versus foreign origin).

In contrast, there are only a handful of IP strategists – notably about 300 listed by IAM Magazine.

Mega-filers such as IBM and Microsoft have refined their IP strategy processes internally (for all of the above reasons). But somewhere between the one-shot-wonders hoping for a QVC win, and the mega-filers, there are the bread-and-butter mid-sized companies that will follow a smart strategy to shareholder value creation.

So, when you find yourself at a fork in the road, should you take the status-quo left as you’ve been trained, or go right, and expand the scope and quality of your legal services (and concurrently, revenue)?

Choose wisely.

Rather than simply filing the patent by rote, following the same old response-driven, narrow-view application drafting, step back and consider engaging the client on a more important salutary level.


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Join the Discussion

2 comments so far.

  • [Avatar for Kelli Proia]
    Kelli Proia
    March 27, 2013 10:56 am

    Interesting post.

    I agree when you write…”I say myopically because despite what many attorneys would believe, they are not trained to, nor rarely look beyond the strict perimeter of the invention.” This is a very accurate description.

    However I completely disagree with the following statement. “On the other hand, what most clients inherently want, is not to simply “get a patent”, but to create a defensible or enforceable techno-legal position consistent with the company’s IP strategy.”

    After 15 years as an IP attorney, most clients actually just want to get a patent. Why? They have no IP strategy beyond just getting a patent to protect their innovation and they have no clue what a patent actually is and how it’s used in relation to the rest of the business.

    Which leads me to disagree with this statement. “However, the elephant in the room is the client’s implicit desire not for a “patent”, but for a mechanism to deliver superior market position, protect competitive market share, and to create increased shareholder value. They believe the “patent” is their ticket.”

    Most clients don’t have a clue that this is a patent’s true use. When you explain to a company that in order to deliver superior market position, protect market share, etc. that they might have to “sue” they’re shocked, dismayed, and turned off by the notion that they have to get their hands dirty with a law suit. (I blame the rise of the theory of patents for “defensive” purposes only. Most truly believe that having the patent alone will be enough to achieve the aforementioned business objectives.)

    Think about this. Most corporate IP departments are run by patent attorneys. The very same attorneys that you say are myopically focused on drafting claims. Do you think that the moment they go in-house they suddenly understand strategic planning and business objectives? Every in-house IP department I’ve worked for is run by a myopic patent attorney who hides in a corner focused on drafting patent claims.

    And what of the companies that don’t have in-house IP counsel? I’ve yet to meet an executive that truly gets patents.

    As an IP strategist myself, I understand what you are saying. A good IP strategy can really help a business achieve their goals. However, I think we’ve got a long way to go in terms of this type of thinking being commonplace in most companies.

  • [Avatar for Steve M]
    Steve M
    March 25, 2013 08:11 pm

    Thanks for the very worthwhile article Andy. Much excellent, actionable information.

    A thought concerning your, “Patents pursued only on commercially valuable inventions” point.

    This statement presumes that the inventor(s), IP strategist, or whomever — knows with certainty which inventions will be commercially valuable years in the future.

    This is a risky assumption indeed, and could cost companies/ inventors millions should something initially characterized along the lines of, “no one would ever do/ need/ want/ use/ buy that!” not be patented.

    Better; especially for small to mid-sized companies and independent inventors; to go ahead and file those, “not that!” patents to be sure nothing potentially worthwhile and highly valuable 5-10+ years from now is discarded.

    No one knows what the future may hold . . . or which inventions will prove to be valuable.