Three Questions to Ask an IP Attorney

How does a start-up founder choose an intellectual property attorney?

I asked Rebecca Conner, an attorney with LeClairRyan who specializes in IP for emerging companies, "What are three questions a technology company founder should ask a prospective IP attorney to find out whether or not the company and the IP attorney are a good fit?"

Three questions to ask an IP attorney Rebecca Conner kindly replied:

1.  Does the firm have subject matter experts in the company's relevant industry (e.g. chemistry, life sciences, IT, opto-electronics, biotech, etc.)? 

In order to adequately protect IP, a company founder needs access to an IP attorney who is an expert in the company's technology vertical market.  If the IP attorney cannot understand the invention, he/she cannot properly protect the invention.  
2.  Does the firm have experts in all areas of IP protection? 

If the firm does not have an expert in each area of IP protection, the firm will not be able to help the company protect all aspects of its invention.  For example, if the invention consists of proprietary hardware bundled with proprietary software, all 4 areas of IP protection – patents, copyrights, trademarks, trade secrets – should be considered.  Attorneys in each IP area need to be able to work together to protect the invention holistically.  
3.  Does the firm have experts that can assist in other areas of business (e.g. raising capital and financing, general corporate work, tax issues)? 

In order to adequately protect IP, a company's IP attorney needs to have a firm understanding of all aspects of the company's business.  If the firm provides all of the legal work necessary for the operation and growth of the business, the company's IP will be consistently evaluated to ensure that it is adequately protected. 

For example, if a company founder is in the process of raising capital, the company's corporate attorney may need to work with company's IP attorney to better understand the business in order to identify suitable investors or sources of financing.  Or, if the corporate attorney is helping a founder set up a distributorship in another nation, your corporate attorney needs to work with your IP attorney to ensure that your IP protection extends to operations in that nation.  These collaborative processes occur most effectively and cost-efficiently when all of legal work is being provided by one firm.

Thank you very much, Rebecca!

Rebecca B. Conner, attorney at law with LeClairRyan, focuses her practice on emerging growth companies in a variety of practice areas including entity selection and formation, mergers and acquisitions, intellectual property matters, and a variety of financing transactions, including, but not limited to, venture capital transactions. Ms. Conner also regularly advises clients concerning issues relating to technology contracts.

You're invited to read more on the subject of intellectual property on Handshake 2.0.

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