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Patent Management Checkup: Is it Time to Upgrade Your Patent Counsel?

May 10, 2024

Patents are expensive, complex, and time consuming. They also may be some of your company’s most valuable assets.

Your outside patent counsel should be a trusted partner that significantly eases the burden of patent strategy and management. Unfortunately, some patent firms fall short and end up being more of a burden than a boon to your intellectual property endeavors.

Here are a few warning signs that it may be time to consider shaking up your legal team:

1. You are getting surprise bills.

If you feel like you’re playing a game of patent invoice roulette every month, where you hold your breath as you open each invoice, it might be time to reconsider your patent counsel.  Routine patent tasks are fairly straightforward to quote and can commonly be performed on a flat fee basis.  And less predictable tasks can be approached in phases with set budgets rather than operating on a blank check.  Surprise legal bills should never be a regular part of your business strategy.

    2. You are not getting any bills.

    There are two common reasons you may not be getting bills despite having an active patent portfolio:

    Reason 1: because work is not actually being done.  Silence may be golden, but not when it comes to your patent work. If your inbox is as empty as the Sahara Desert, it can mean your current firm is not active enough in managing your matters, staying ahead of deadlines, and keeping you informed. 

    Reason 2: because the firm is behind in billing: While there may be some short-term relief in not receiving invoices on at least a monthly basis, it inevitably hits like a financial earthquake when they finally do arrive.  Such irregular billing practices are unfortunately all too common and can wreak havoc for companies trying to manage capital resources.

      3. Every filing deadline is a fire drill.

        If your patent attorney treats every deadline like a last-minute cram session before a final exam, it’s a sign that they might not be managing their time—or your patents—as efficiently as they should be.  Most patent deadlines are known well in advance.  While some backlog can be expected, a procrastinating attorney puts unnecessary stress on your busy schedule and increases the likelihood of a catastrophic missed deadline.  Your attorney should proactively manage your deadlines and not force you to cancel your plans and partake in a last minute fire drill every time something is due.

          4. Your applications go through too many rounds of examination. 

          On average, a typical patent application may take 2-3 rounds of examination to reach a conclusion.  Exceptions are not uncommon, but if the majority of your applications feel stuck in endless cycles of examination, there may be a problem.  These cycles are often an unfortunate results of firms offering a “too good to be true” discount in the initial filing and then taking shortcuts that cost you much more in the long run.

          5. You don’t know who your attorney is.

            If your attorney is as elusive as Bigfoot or as mysterious as a Shapeshifter, it might be time to find someone who’s a bit more present and accountable.  Larger firms especially tend to shuffle work around between an army of junior attorneys and agents, leading to inconsistent strategies, inefficient knowledge transfers, and poor communication.  Having a reliable attorney you can count on is much more important than the name of the firm.

            6. You’re not using Amsel IP Law.

              Just kidding, there are many good patent firms out there with varying expertise and experience.  On the other hand, if your current counsel is a regular source of frustration, consider that transitioning your matters is not the big burden it may feel like.  We can work seamlessly behind the scenes to transfer in your files, quickly get up to speed on your matters, and get your patents back on track. And you will not be billed for the transition.

              Remember, your patent counsel should be a partner in your success, not a source of frustration. If any of these signs sound familiar, it might be time to explore your options and find a firm that makes life a little easier for you.


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