Most businesses start with an idea. It can be an idea on how to make a better chocolate chip cookie or an idea on how to make a flying car. To protect this idea from your competitors, you’ll need the help of an intellectual property lawyer.
Finding a good intellectual property lawyer (or IP lawyer) is similar to finding any good lawyer. We already gave some tips on How to Find a Good Lawyer. Here, we’ll share some shortcuts specific to finding good IP lawyers.
To start, let’s define what intellectual property is. Then, we’ll talk about different types of IP lawyers, so you can better focus on finding the one with the right skills you need.
- What is Intellectual Property?
- What are the Different Types of IP Lawyers?
- Types of Work Performed by IP Lawyers
- Hire an IP Lawyer Registered in front of the US Patent and Trademark Office
- Pick Small or Medium Firm over Large Firm
- Read the Professional Bios
- Set up an Initial Meeting
- You Might Work with Several IP Lawyers at Different Firms as Your Business Grows
What is Intellectual Property?
Ideas are not protectable.
But concrete embodiments of ideas might be.
If you have an idea for a machine and you figure out how to build it, then the machine can be protected with a patent. If you have a great product and you give it a name, then the name can be protected with a trademark. If you’ve written a story based on your idea, then your story can be protected through copyright. And, sometimes, when you have a secret recipe, you can protect it as a trade secret.
The branch of law that protects embodiments of ideas is called intellectual property law. For most people, intellectual property means:
- Patents
- Trademarks
- Copyrights
- Trade Secrets
Most countries in the world have some sort of intellectual property law. For this article, we’ll focus on IP law in the US. Once something is protected in the US, you can often get at least some legal protection around the world through various international treaties.
What are the Different Types of IP Lawyers?
Even though IP law lumps patents, trademarks, copyrights, and trade secrets together, each type of IP protection is different and can be quite detailed. Some intellectual property lawyers will work in all four areas, but others focus on just one or two.
For a small business, it’s better to hire an IP lawyer familiar with all four types of IP law. You’ll tend to find such lawyers at small to medium law firms. Large firms and large corporations tend to use highly specialized lawyers focused on one or two areas only.
Here’s a little bit of explanation about each sub-specialty.
Patent Lawyers
Patent lawyers help inventors get patents. Some patent lawyers work on patent lawsuits too. Because of the technical details of most inventions, patent lawyers have science or engineering college degrees. In the US, you’ll have to pass an exam administered by the US Patent and Trademark Office to be able to call yourself a patent lawyer.
Patents are complicated legal documents, and it takes many years to become a skilled patent lawyer.
Trademark Lawyers
Trademark lawyers help businesses get trademark registrations. They also often work on trademark lawsuits.
You don’t have to pass a special exam or have a technical background to be a trademark lawyer. You just have to be a lawyer. This is why some business/corporate lawyers might offer to get you a trademark registration after they’ve helped you form your business entity.
Copyright Lawyers
Lawyers who work on copyright matters are copyright lawyers. Not many lawyers practice only copyright law.
Most intellectual property lawyers who work on copyright matters also work on another type of IP law. Sometimes this is IP litigation, and other times, it’s IP licensing. Like trademark lawyers, you don’t have to have a technical degree or pass the USPTO patent exam to be a copyright lawyer.
Trade Secret Lawyers
A trade secret is something that gives a business some advantage over its competitors and that is kept as a secret. This is why trade secret has a lot to do with a company’s internal secret-keeping procedures. You don’t file documents with government agencies at all.
This is why intellectual property lawyers don’t usually call themselves trade secret lawyers. Most IP lawyers who work on trade secret matters tend to be either IP litigators or in-house lawyers who oversee internal procedures.
Types of Work Performed by IP Lawyers
IP law is a specialized area of law. Even within a sub-specialty, there are lawyers focused only on a very specific slice of work.
Prosecution
When an IP lawyer says they work in prosecution, they mean that they file and get patent or trademark registrations for clients. These are the types of IP lawyers a small startup business is most likely to work with.
Inventors work with patent prosecutors to file patent applications. Patent prosecutors know the rules of the US Patent and Trademark Office. They help inventors with correspondences from the Patent Office related to the patent application.
Business owners also work with trademark prosecutors to do trademark clearance searches and file trademark applications. Like patent prosecutors, trademark prosecutors help business owners deal with application-related correspondences from the Trademark Office.
Copyright registration is typically a simple form filed by the author. The Copyright Office almost never rejects applications, so copyright applicants don’t usually need a lawyer’s help. This is why lawyers who work on copyright issues don’t call themselves copyright prosecutors.
Litigation
Some IP lawyers work in IP litigation. IP litigation includes patent litigation, trademark litigation, copyright litigation, trade secret litigation, and unfair competition litigation.
Some IP litigators only litigate, but others both litigate and prosecute. What’s more, because patent work usually involves high tech, some patent litigators only litigate patents. Other IP litigators who do not have technical degrees tend to focus more on trademark, copyright, trade secret, and unfair competition litigation.
Transactional
Transactional intellectual property lawyers work on IP licensing agreements. Again, some areas are very specialized. For example, some patent transactional lawyers only work on patent licensing. There are contracts that focus on trademark or copyright licensing as well.
General business lawyers sometimes will work on agreements that touch IP licensing. A lot of standard business agreements will also have trade secret components in the agreement (e.g. Non-Disclosure Agreements).
Most contracts reviewed by general business lawyers tend to focus on the business deal itself. The contracts might have a few fairly standard IP-related clauses added on. The more technology-focused your business is, however, the more you’ll need an IP licensing lawyer’s help reviewing your contracts.
Hire an IP Lawyer Registered in front of the US Patent and Trademark Office
If you’re a small business looking to hire an intellectual property lawyer, we recommend you find one that can do all aspects of IP work. This means that they should be a patent lawyer who works in other IP areas.
Although a general business lawyer can help you with a trademark application, you’ll still have to look for an IP specialist if you have patent questions. So, it’s easier to just find an IP lawyer who can help you with both patent and trademark questions.
In the US, only those who’ve passed a rigorous exam administered by the US Patent and Trademark Office can help inventors get patent applications. (Technically, an inventor can represent themselves. However, patent prosecution rules and patent law are complex areas, so we do not recommend you even try.)
So, being a patent lawyer is the minimum requirement for the IP lawyer you’ll need. Fortunately, there’s an easy way to look for patent lawyers.
Search the Patent Practitioners List
The US Patent and Trademark Office keeps a searchable list of those who’ve passed the patent exam (also known as the patent bar). This list can be narrowed by location. If the person works at a law firm, the search results will also give you the name of the firm.
If you need a patent lawyer, this is an excellent place to start.
You can try to see the types of patents a patent lawyer has worked on by searching issued patents. Some patents will list the attorney or agent’s name, but this information isn’t always accurate.
Patent Lawyer vs. Patent Agent
When you search the patent practitioner’s list from the USPTO, you’ll see folks categorized as patent attorneys or patent agents.
A patent attorney is a lawyer who has also passed the patent bar. Not only can they help you file a patent application, they may also be able to help you file a trademark application or do any of the things IP lawyers can do.
A patent agent is not a lawyer. They are folks who have the technical degree needed to take the patent exam and have passed the exam. Patent agents can only help people file patent applications. They can’t do other things a lawyer can do, like give patent infringement opinions, negotiate patent licensing agreements, or litigate patents. Some large corporations or law firms use patent agents, but these agents almost always work in tandem with patent lawyers to give clients a full suite of patent-related services.
As a small business, you need someone who can do more than just file patent applications. Look for a patent lawyer instead of a patent agent.
Search Trademark Database for Attorney of Record
Once you have a list of patent lawyers in your area, go to the trademark portion of the USPTO and look up these same folks in the trademarks database. This database lists all the approved and pending trademarks, but you can also search the list by the attorney of record. (Use Word and/or Structured Search (Structured). Then insert the attorney’s name as a search term, and, in the Field section, select Attorney of Record.)
If the patent lawyer on your list also has trademarks listed under their name, then you know that they work in both areas. Some senior lawyers like to file trademarks under their name but get younger lawyers to do all the work. So, just because a lawyer has hundreds of marks listed under their name doesn’t mean they worked on all of them. Having 20-30 marks listed probably is enough experience.
Pick Small or Medium Firm over Large Firm
As with most areas of law, you’ll find good lawyers practicing at firms of all sizes. In larger firms, they tend to specialize because they have lots of big clients who hire them to do one type of work. At smaller firms, you’re more likely to find generalists.
A startup business tends to need help with only one or two types of IP. So, it makes economical sense to hire a lawyer who can handle all types of IP work. You’ll have better luck finding such a lawyer at a small or medium firm.
Smaller firms tend to charge less, so that’s a great help for a startup small business. Charging less doesn’t mean inferior work, however. It just means that the lawyer is trying to build a practice.
Read the Professional Bios
Don’t forget to read the IP attorney’s bio as a part of the vetting process. But, keep in mind that bios can be marketing documents,. Some lawyers brag more than others.
Here are a few things to pay attention to, when reading intellectual property lawyer bios.
Years in Practice
We recommend you look for IP lawyers with at least 7-10 years of experience. For general business lawyers, the years of practice can be less. But, when you look for an IP lawyer—especially a patent lawyer—you’ll want to add a few years to that.
The main reason you want someone with 7-10 years of IP law experience is because it can take from two to six years or more for a patent application to be approved as a patent. Sometimes, this is deliberate. So, you’ll want to hire a patent lawyer who knows why and how to speed up or slow down the application process. Given the patent pendency timeline, 7-10 years seems like a good experience level.
Areas of Practice
Depending on your business’s needs, you’ll want to make sure the IP lawyer you hire can do the work. For a small business that needs an IP lawyer, you’ll probably need patent prosecution, trademark prosecution, and IP transactional experience.
Set up an Initial Meeting
As a last step to finding a good IP lawyer, you’ll want to set up an in-person meeting. For a list of suggested things to do during this meeting, take a look at our How to Find a Good Lawyer article.
At the end of the day, you’re looking for someone you’re comfortable working with for at least a few years.
You Might Work with Several IP Lawyers at Different Firms as Your Business Grows
Some small businesses will only need to work with an IP lawyer in the beginning stages. Other, more tech-focused startups will probably work with an IP lawyer for a lot longer. Depending on how fast your business grows and whether you get outside investors, you might work with several IP lawyers or law firms.
So, at this startup stage of your business, find the best IP lawyer you can, for the price you can afford. Don’t be afraid to switch firms or lawyers in the future. Sometimes, your tech investors might even demand it, to have the name recognition of a bigger firm.
Questions? Comments?
