While most people who bother to think about patent law at all think that the area is highly specialized, the field of patent law actually involves sub-specialties like patent litigation, patent licensing, and patent prosecution. While there are unique aspects to all of the patent law sub-specialties that can make them good candidates for boutique firms, patent prosecution differs so drastically from a “typical” legal practice that shoehorning patent prosecution within a general practice firm - while possible - limits what is possible in patent prosecution. A patent prosecutor in a general practice firm can provide good service, but providing truly effective and efficient patent prosecution service requires a different framework than a general practice law firm is situated to offer.
There are a few obvious differences that are surmountable, including things like the Patent Office’s insistence on administering its own bar exam that requires a technical background, that patent prosecutors practice before the examiners of the Patent Office instead of judges in the court system, and the relatively small scope of individual patent applications as compared to most matters at large law firms.
The less obvious differences between patent prosecution and a general legal practice are what make truly great patent prosecution in a general practice firm difficult. Patents are assets that last for roughly 20 years. Getting a patent requires the patent prosecutor must understand a client’s invention and the prior technology sufficiently to distinguish the new invention from what has been done before. Just understanding past technology and the new invention is not enough for a patent prosecutor to obtain a high-value patent. Obtaining a high-value patent requires the patent prosecutor to deeply understand a client’s business plan and the future of technology in addition to understanding the past. Armed with this advanced knowledge of a client’s technology and business, the patent prosecutor must deploy his or her legal skills to secure patent rights that will be valuable decades into the future.
Developing the level of knowledge and understanding required for patent prosecution simply does not fit the practice model of most large general practice law firms. Certainly, every law firm strives to understand their clients’ businesses, and most firms even want their attorneys to know something about technology, but excelling at patent prosecution requires another level of investment in knowledge and understanding. As a patent prosecution attorney, my concern is not only this week’s deposition or next month’s merger or even a trial in the winter, but also extends from technology any time prior to today to how the right patent stands to impact a business over the next 20 years.
In ways large and small, a general practice law firm is understandably set up to deal with the concerns presented by a typical legal practice because clients hire general practice law firms to deal with precisely those types of concerns. When a lawsuit has been filed, a small army of talented attorneys to review documents, research the law, and write motions is precisely what the client needs, even if that small army of lawyers is billing by the hour. A typical legal practice involves a series of projects culminating in a large conclusion, such as a trial or a deal closing. Lawyers often use martial metaphors to refer to the battles that are fought over the course of a legal war. Everything from the pyramid structure of firms to their billing systems reflects the demands of such a typical legal practice.
Patent prosecution, however, has altogether different concerns that cannot be met within the framework of a general practice firm. One or two attorneys working with a client can develop the depth of knowledge needed to obtain excellent patents on the client’s behalf, but dividing that knowledge over a small army of attorneys is affirmatively counterproductive and unnecessarily expensive. Hourly billing can make a lot of sense for most legal matters, but project-based billing allows a client to know what this asset they are acquiring actually costs. While the recent move to a first-to-file patent system in the United States makes filing a patent application a matter of some urgency, patent prosecution involves few singularly large conclusions like a trial or a deal closing. Martial metaphors fail to capture the essence of high quality patent prosecution, which is more akin to growing a garden than going to war. Patent prosecution boutiques can be organized to develop assets that matter over decades rather than to simply win today’s battles.
By focusing on a client’s patent needs in relationship to their long-term business strategy instead of the client’s needs as they might be met by a “typical” attorney, a patent prosecution boutique can create a framework that encourages the deep knowledge of technology and the intimate understanding of a client’s business that is required to obtain high-value patents. Instead of being organized to fight legal wars, boutiques can be organized to cultivate assets over a long period of time. That means developing the knowledge of the right people instead of having a small army of attorneys available. That means billing by the project instead of billing by the hour as the default. That means putting effort into working with clients to determine which patent applications should be filed instead of just filing as many applications as possible.
Patent prosecution boutiques can be structured to do one thing extremely well, and that is obtain patents that are building blocks to a client’s business for years.