Top Ten Questions You Should Ask Your IP Attorney; And The Answers You Should Look For

Benjamin A. Katzenellenbogen
ben.katzenellenbogen@kmob.com

As published in the Los Angeles Daily Journal, September 2008

What is the scope of your IP experience?
Even the most experienced IP attorney is unlikely to be an expert on every aspect of IP. For example, your nationally renowned high-stakes patent litigator probably does not prosecute very many trademark applications. A good way to address the specialist versus generalist tension is by looking for an IP attorney who: (a) specializes in your core area; (b) has a sufficiently broad IP background to spot potential issues; and (c) has established relationships with attorneys in his or her firm or elsewhere who specialize in other areas of IP.

What are the backgrounds of the other attorneys with whom you work?
It is even more difficult for an individual attorney to have a strong technical background in multiple fields than to have a thorough understanding of every aspect of IP law. A good way to combine breadth and depth of legal and technical knowledge is to hire an attorney who works with other attorneys having a wide variety of technical backgrounds as well as copyright, trademark and patent specialists in both prosecution and litigation. Also, look for attorneys having established relationships with IP attorneys in other countries that are ready to assist with the international aspects of your IP issues.

Who is actually going to be working on my matters?
Find out what aspects of your matters your lead counsel will perform, and get to know the attorneys who are going to be doing the rest of the work. Make sure you are comfortable with the supporting attorneys' roles in your projects, as well as their experiences, communication skills and technical backgrounds. The brilliance of your lead counsel's in-person arguments may be wasted if the previously submitted briefing is inadequate.

Does your firm encourage collaboration?
One advantage of retaining an IP attorney at a large firm should be having access to the combined experience and technical training of all of the firm's attorneys. When your IP counsel identifies an issue that is outside of his or her core area of expertise, you want your outside counsel to walk down the hall and consult with an attorney who is an expert in that area. Having attorneys with a variety of technical and legal specialties is irrelevant if the structure or culture of the firm does not encourage collaboration.

How do your partners allocate firm income?
Money often gets in the way of collaboration. Some firms give the originating partner a percentage of your total billings, less a negotiated percentage given to other partners who work on your matters. This may create an incentive for the originating partner to personally do as much of your work as possible, or to steer your work to the attorneys within the firm who are willing to do it for the least compensation. Neither of those is likely to be in your best interests. When the originating partner involves other attorneys in your matters, you want your work distributed to the attorneys best suited to handle your matters. Look for firms that encourage collaboration by making distribution of your matters to the most appropriate attorneys cost-neutral to the originating partner.

What are your billable hour requirements?
The correct answer is not, "the higher the better." High billable hour requirements can: incentivize unnecessary work on your projects; increase the amount of your work being done late at night and early in the morning; and reduce the time and energy reserves your attorneys have to devote to your inevitable emergencies. Look for attorneys having billable hour requirements that allow them to provide consistently high quality work product and effective representation at critical junctures.

What is the turnover at your firm?
High turnover means perpetually trying to get new attorneys up to speed on the details of your technology and your existing matters. Even if the firm does not charge for the time it takes new attorneys to relearn the facts and law (and many do), you lose the benefit of having your IP counsel develop institutional knowledge about your business, technology and personnel. This is particularly acute in litigation and prosecution matters. There is no substitute for going to trial with the same group of attorneys that reviewed the documents, took the depositions and wrote the motions. Moreover, an attorney that is already familiar with your business, employees, competitors and overall IP strategy can more efficiently prepare better patent and trademark applications.

How long have you worked at your current firm?
Having to train new attorneys about your matters and technology can also occur when your primary attorney changes law firms. You want attorneys who work in stable environments that facilitate providing clients with excellent legal services. Attorneys that view your book of business as their portable asset, to be sold (and re-sold) to the highest bidder, may not have chosen their current firm because it best meets your needs. Seek out attorneys that are happy at their current firm and do not have a history of frequently changing firms in search of a larger paycheck.

How do you determine if your strategy is furthering my objectives?
Prevailing after long and expensive proceedings in court or in front of the United States Patent and Trademark office is not always "winning." You do not want your IP projects taking on lives of their own that are independent from, or potentially at cross-purposes with, your overall business strategy. Look for attorneys who understand that the only goal of any legal project, including litigation, is to meet your business objectives. Ideally, your IP attorney will discuss your business goals with you in a way that helps you critically evaluate and further define your objectives.

Can I contact one or two of your clients as references?
In addition to asking questions about credentials, experience and representative clients, you should ask to talk to one or more existing clients. Existing clients are an invaluable resource in assessing how your IP matters are likely to be handled. When selecting and evaluating IP counsel, do not be afraid of asking questions necessary to assess your attorneys and their firm. The answers to these questions can significantly impact the quality of your IP representation.

© 2007 Knobbe, Martens, Olson & Bear, LLP, a Limited Liability Partnership including Professional Corporations.