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IP: Bringing outside counsel in

Forging close ties with outside attorneys can help strengthen patent portfolios

In developing a patent portfolio in Silicon Valley, organizations rarely have adequate internal resources and instead turn to outside counsel to assist. The level of reliance and type of involvement can vary, but generally the tasks assigned to outside counsel include invention harvesting, strategy development and patent prosecution. To execute these tasks at the highest level, outside counsel should not only have a full understanding of the organization’s technology, but also other aspects of the organization, such as culture, short and long term goals, and pain points.

Patent practitioners are required to have a technical background. In theory, this background enables the outside counsel to sufficiently understand the technology for purposes of drafting and prosecuting a patent application. After meeting with the inventors for an invention disclosure meeting, the outside counsel will generally prepare a patent application that the inventors think discloses their invention. However, in practice, such an approach generally only produces an application that those in the tech industry would characterize as a minimal viable product. By investing some time and resources to bring their outside counsel into the organization, an organization can be rewarded with significantly improved work product, a stronger relationship between the firm and the in-house team, and a better working relationship between the outside counsel and the inventors.

Contributing Author

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Gideon Myles

Gideon Myles Ph.D. is an attorney at the Silicon Valley office of IP super boutique Novak Druce Connolly Bove + Quigg. Prior to joining...

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