A GUIDE TO PATENT ATTORNEY: HOW TO ENTER THE MARKET OF “PATENT PROSECUTION AND PATENT ADMINISTRATIVE LITIGATION”?

Author : Lawyer Raymond Yu

The author’s career has ranged from a military weapons researcher, a patent engineer to a lawyer, specialized in patent specification drafting, patent specification translation, patent office action replying, invalidation action filing, patent licensing, patent infringement/non-infringement legal opinions providing, patent litigation, international patent litigation representing etc., with more than 15 Years of practice work experience and knowledge of the patent ecology, the author hopes that through this article lawyers who want to engage in the field of patent or those who are already engaged in the field of patent could have more idea in business development.

  1. How can lawyers enter the market of “patent prosecution”?

Patent prosecution is a labor-intensive business, and the firm must hire professionals/patent engineers in various fields in order to be able to cope with patent technical documents that clients provide. Most lawyers do not have knowledge of science or technology, or even if they have, they are only capable of satisfying a small part of the client’s needs. There is no way to expand the business to all other aspects.

Besides, team members must also have excellent foreign language skills. The business of patent prosecution is transnational. In addition to applying for Taiwan patents, clients may also need patent applications of other countries such as the United States, Europe, mainland China, Japan.

To put it simply, the author believes that if lawyers want to break into the market for patent prosecution, there should be at least 3 patent engineers having the knowledge in the field of EE, mechanics, and chemistry, a supervisor for patent review and a patent administrator with fluent English. Without such a team, it might be very difficult to have a stable source of client

At present, domestic large and medium-sized patent and trademark offices usually accommodate more than thirty or forty patent engineers. Large-scale enterprises prefer this type of office generally and most of the contact persons in firms are patent attorneys or people with patent prosecution practice experience, not lawyers. In light of this, it is difficult for lawyers to expand client base without patent experiences. Patent attorneys and patent agents are the main players in this market.

Difficulty:★★★

  1. How can lawyers enter the market of “patent administrative litigation”?

The common reason that clients encounter patent administrative litigation cases is due to the relief of patent application. If the client’s patent application is appointed to a patent and trademark office, there is little chance to ask a lawyer in another office for dealing with the administrative litigation. On the other hand, a large part of the defense in patent administrative litigation is a defense based on the content of technology. If a lawyer wants to engage in such a case, it is necessary to hire someone with a background in the field of science or engineering.

Generally speaking, if a law firm is able to obtain patent prosecution cases, patent administrative litigation cases appear without special effort or promotion. Patent attorneys and patent agents are the main players in this market.

Difficulty:★★★

  1. How can lawyers enter the market of “patent litigation cases/ patent invalidation cases”?

Clients usually find lawyers to represent patent litigation cases (generally for civil litigation), and a few only find patent attorneys. Therefore, patent litigation cases are a market that lawyers can definitely enter.

Clients prefer to file the lawsuit with the lawyer having the knowledge of the specific field according to the case. For example, the author often receives patent litigation cases in regard to engineering, electronics, and electrical information. Some clients directly cooperate with the lawyers hired by a patent and trademark office.

Generally, if a lawyer does not have a team comprising members with a science or engineering background, it is recommended to cooperate directly with a patent and trademark office. In such cases, the patent and trademark office handles the application and the lawyer team handles the dispute. If you are unwilling to cooperate with a patent and trademark office and without a team of members with a science or engineering background, you need to have a wealth of practical experience in patent litigation before you can convince clients. Lawyers of this type usually handle patent litigation in large firms and establish their own business after a few years of practice.

Difficulty:★★

  1. How can lawyers enter the market of “representation of parties in international patent litigation cases”?

The definition of representing clients in international patent litigation cases here refers to representing clients from Taiwan in patent litigation cases abroad (cooperating with foreign patent litigation lawyers) or representing foreign clients in Taiwan or mainland China.

First of all, let’s discuss foreign patent litigation cases.

When Taiwanese clients face patent litigation in foreign countries,  they would like to interview or learn more about the background and experience of the foreign patent attorney, because the budget for patent litigation in foreign countries usually costs several times (US patent litigation budgets can even be as high as 100 times) more than a case in Taiwan, clients are certainly much more cautious. In light of this, the size of the firm, the reputation of the chief lawyers, the background of the team members, the experience of transnational litigation, etc., are all factors that clients would consider.

This type of case is difficult to be undertaken by one lawyer alone. If a lawyer is not working in a large or medium-sized office, it is recommended to form an alliance with other lawyers or patent and trademark offices to increase the success rate of taking the case.

In order to represent foreign clients in patent litigation cases in Taiwan or the mainland, the premise here is to have contacts from foreign firms. When foreign clients encounter patent litigation cases in Taiwan, they usually ask firms or lawyers in their own countries for recommending lawyers in Taiwan. Thus, establishing a network of foreign lawyers or firms becomes a very important issue in expanding the source of the case. It is suggested that lawyers who are interested in such cases can participate in international intellectual property conferences held every year, such as INTA, APAA, AIPLA, FICPI, etc. to take opportunities to meet foreign lawyers and improve the chances of obtaining foreign clients.

Based on the author’s own experience, you cannot expect to obtain a case by only participating in 1 or 2 international conferences. Basically, it is necessary to continuously take part in international conferences for more than 3 years and meet or gather with the lawyers met before to become familiar or good friends. After becoming good friends, cases will come to you automatically. However, the cost of this kind of network expansion is large. Take INTA, the world’s largest intellectual property professionals gathering as an example, there are about 15,000 intellectual property lawyers joining from all over the world annually. The expense of admission tickets, lodging, and airfare is about NT$100,000 or more. Large firms usually send several partners to attend, and sometimes even rent exclusive meeting rooms or buy booths (promotion booths) from the organizer, which costs more than NT. 1,000,000 a year. For small and medium-sized firms, it is uneasy to afford it every year.

The author here suggests several ways to save money:

  1. Choosing to attend meetings held in Asia, so that airfare and accommodation fees are cheaper.
  2. Choosing to go directly to the Reception (welcome party) held by other law firms without buying tickets from the organizer, which can save tens of thousands NT dollars.

For newcomers who have just started attending international conferences, it is recommended to follow with some Party Queens or Party Kings (who are highly popular and always in the limelight, those people are mainly European and American lawyers) in conferences, as long as you are with them, you are able to take part in different receptions intensively, and be able to quickly meet a large group of communities that already know each other, increasing the chance of improving visibility.

Difficulty:★★★

Conclusion

The first condition for expanding the business regarding patents is that you must understand the ecology of the patent industry and must have a lot of practical experience. The author recommends that young lawyers who are interested in such a business can choose to work in a “patent and trademark office” or a law firm handling cases in regard to patents to gain experience and accumulate contacts, and consider which business to develop after a period of time.

The author has friends who are lawyers specialize in patent prosecution cases, and also some friends specialize in patent litigation cases. However, from the perspective of resource utilization, it is not easy for a small-sized office to fully handle various patent businesses. It is suggested that lawyers who are ambitious to make a goal to become a partner of a large firm, taking advantage of resources integration and teamwork to operate with less effort.

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