During the patent and licensing process, your university's Technology Transfer Office will utilize internal legal resources or external counsel. Any attorney employed or engaged by the university or technology transfer office will function and act in the best interest of the university. This may or may not coincide with what is fair to you or even what is demanded by law or university policy. Researchers are recommended to retain personal legal counsel that will function on their behalf.
There are many ways to locate an attorney:
- Internet Advertising
- Telephone Directory Advertising
- USPTO Roster
While retaining an attorney is an expensive proposition, some may offer a free first session to discuss your legal matters. Attorneys are obligated to protect the interests of the person or entity who engaged them. Your attorney will operate solely in the best interests of you, your research and your discovery. If your innovation is destined for widespread usage or commercialization, it can be well worth the investment.
Selecting a qualified attorney based on the information in their marketing materials can be a difficult decision and therefore, a referral can be an easier route. However, the USPTO roster is the most recommended method. As a service to inventors and the general public, the United States Patent and Trademark Office maintains a roster of agents and attorneys registered to practice before them. To be on the USPTO roster, attorneys must:
- Pass the Patent's Agents Exam
- Provide proof of scientific and technical qualifications
- Complete an application and submit supporting documentation
It can also be difficult to find a qualified attorney that does not have a conflict of interest with the local University or Licensee. Most of the time, once you have discussed your case with an IP attorney, all lawyers in that firm will be disqualified from representing your opposition. Individual inventors have an acute disadvantage in obtaining excellent IP representation and getting fair hearings in a college town.
Most people do not engage an attorney until they need one. However, in this case, it may be more beneficial to select an attorney when you have the luxury of time to verify references, visit their offices and research their expertise and track record. If you ever end up in a courtroom, defending your rights to your innovations, you want an experienced Intellectual Property attorney at your side. A letter of intent or small retainer may be required but afterward, you will have secured legal representation should the need arise.
Read this revealing speech by a Washington state judge where he discusses the inexperience of most of his peers regarding Intellectual Property law.