When young companies decide to hire patent counsel, there can be a bewildering number of choices. The level of experience that company principals bring to the table bears heavily on the decision of which counsel to choose, as it should. And success with a particular attorney in the past leads to a tendency to choose that attorney or firm in the future.
First-time innovators are faced with important decisions in choosing a patent attorney, but have less experience with which to inform these choices than would a seasoned C-suite starting an nth venture. However, many of the decision criteria are the same for a company with relatively little experience in developing and managing an intellectual property portfolio and an experienced team that has already lived at least one start-up-to-exit life.
Critical Selection Criteria
Cost is always a priority, but especially for new companies that are still self-funding and seeking funding. However, it should never be the first criterion. Potential clients should think about:
- Who within the company will be tasked with spearheading the IP effort? Does that person understand and embrace the task, and have a clear idea of goals and budgetary constraints?
- Do the engineers understand the relative importance of spending time developing IP assets when they have so many other pressing tasks? Do the engineers receive financial incentives for time devoted to developing IP assets?
- What are the technical qualifications of the outside counsel individuals who will be working with in-house engineers to develop IP assets?
- Will the company be notified of the list of counsel designated to work on company IP matters, and notified if that list changes?
- Is there a formal or informal eye in the company on how the relationship between engineers and outside counsel is going?
- Is there good communication between the IP designate within the company and outside counsel to quickly address any issues that might affect company goals before they become costly?
The Reward of Helping Clients Succeed
Outside counsel patent attorneys have a unique dual role in working with young companies. That role can be both challenging and very rewarding. The sense of accomplishment when the company takes off and long-term collaborations result in success is really special.
As a recent and very exciting example, Martensen IP client Nuvia, Inc. has been acquired by Qualcomm in a $1.4B deal. Partner Barbara Courtney, who resides in Silicon Valley, has had long relationships with Nuvia technical folks going back to their respective previous companies, which led to our engagement with Nuvia. Our mission was to understand the company’s valuable patentable innovations and turn them into intellectual property assets in a short period, while at the same time understanding budget constraints and the company posture in the marketplace. We’re pleased to have achieved that objective and offer our sincere congratulations to Nuvia!
About Martensen IP
At the intersection of business, law and technology, Martensen understands the tools of IP. Martensen knows the business of IP. We understand the tech market, especially when the government is a customer, and we know how to plan, assess, and adjust. Patents, trademarks, copyrights, trade secrets, licenses are our tools.
Martensen IP Media Contact
Mike Martensen | Founder
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