In-house patent counsel play a pivotal role in managing and growing a company’s patent portfolio. Our patent attorneys bring firsthand experience as in-house intellectual property counsel, enabling us to understand the unique challenges faced by in-house patent counsel. From identifying and reviewing invention disclosures to aligning patent strategies with business objectives, we’ve seen it all.
Our team’s in-house counsel experience spans corporate and government intellectual property groups. For instance, Luis Ortiz served as in-house patent counsel for the U.S. Department of Energy and Nortel Networks and supported patent preparation and prosecution during his tenure as a JAG with the U.S. Air Force Reserve. Similarly, Kermit Lopez held in-house positions with Sandia National Laboratories and Ericsson, Inc., where he contributed to their patent preparation and prosecution programs. Drawing from this wealth of experience, we recognize the common mistakes in-house patent counsel make and how to address them effectively.
Here are the top five mistakes made by in-house patent counsel—and actionable solutions to address these challenges:
1. Lack of Communication
a. Insufficient Communication with Inventors and Business Units
In-house counsel often become isolated from the engineers, scientists, and other innovators driving a company’s intellectual property. Staying in your office and neglecting to engage with inventors can result in missed opportunities and delayed invention disclosures.
Solution: Build relationships with your inventors and business units. Attend team meetings, schedule informal coffee chats, and stay attuned to their projects. By fostering open lines of communication, you’ll stay informed about ongoing innovations and build trust within the organization.
b. Limited Communication with Outside Counsel
Outside patent counsel play an essential role in a company’s patent program. When in-house counsel fail to keep them informed about organizational changes, such as downsizing or staffing adjustments, it can disrupt the workflow and lead to misaligned expectations.
Solution: Maintain regular contact with outside counsel to keep them apprised of developments within the organization. Transparent communication ensures they can adapt their approach and continue delivering effective support.
2. Waiting Too Long to File
Since the implementation of the America Invents Act (AIA) in 2013, the U.S. operates under a First Inventor to File (FITF) system. This means the USPTO grants a patent to the first inventor to file an application, regardless of when the invention was conceived. Delays in filing can jeopardize a company’s intellectual property rights.
Solution: Don’t sit on invention disclosures. If time constraints prevent you from preparing and filing applications promptly, delegate the task to outside counsel. Acting swiftly ensures your company’s innovations secure priority at the USPTO.
3. Neglecting Portfolio Alignment with Business Goals
A misaligned patent portfolio can waste resources and fail to support the company’s strategic objectives. Some business units may have robust patent activity, while others are overlooked despite their long-term potential.
Solution: Regularly review your company’s patent filings in the context of business goals and future product plans. For example, if a business unit is expected to develop new products down the road, start patenting now to secure foundational IP that supports future growth.
4. Focusing Solely on Defensive Patents
Many companies prioritize defensive patents—those used to counteract infringement claims—at the expense of offensive patents, which can generate licensing revenue and strengthen market positioning.
Solution: Strive for a balanced patent portfolio. While defensive patents are crucial, ensure your company also obtains offensive patents that can be licensed or monetized. A well-rounded portfolio enhances both legal protection and revenue generation opportunities.
5. Overpaying for Outside Counsel
In-house counsel frequently rely on large, corporate law firms with high billing rates. These firms often assign work to junior attorneys with limited experience, resulting in higher costs without commensurate value. Additionally, geographic location can impact fees significantly.
Solution: Partner with experienced patent attorneys from smaller firms located in less expensive regions. Firms like Ortiz & Lopez, PLLC provide cost-effective, high-quality services tailored to your company’s needs while supporting clients across the U.S. and abroad.
Conclusion
The above five pitfalls—poor communication, delayed filings, misaligned portfolios, over-reliance on defensive patents, and excessive legal fees—are common challenges for in-house patent counsel. However, with proactive strategies, these mistakes can be avoided, allowing your company’s patent program to thrive.