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Evaluating your Patent Attorney





How do you choose a patent attorney? What are the things you should pay attention to? How can you evaluate a patent attorney's work? These are all very good, and hard, questions that we face many times when meeting our clients. We've tried to come up with several pointers for choosing a patent attorney:

Tailoring an IP Strategy: A good patent attorney, in-house or external, has to help his clients devise a global IP strategy that fits the client's current, and future, needs, goals, budget and competition (who are the competitors, where are they likely to focus in the future, etc.). Considering the needs of potential buyers (M&As) is beneficial. The strategy includes designing a plan of what to file, in which territories, and how.

Mining and Prioritizing: In practice, a good patent attorney has to be able to help his clients identify candidates for patent applications, and prioritize to meet the budget constraints. Prioritization is no easy task, and it requires evaluating the business value of the candidates. The business value can be derived from monopolizing the company’s products, or from establishing a “balance of terror” with competitors. In many cases, the clients are focused on the deep technology of their products (the "rocket science"), while missing out on the other relevant parts in their technology, which in many cases are the ones providing them with a competitive edge (in many cases the competitive edge is a result of the bigger picture or of specific features that the customers simply fall in love with, rather than the "rocket science").

Drafting and prosecuting: Once you've identified the candidates, and prioritized, a good patent attorney has to be able to extract the information from the inventors, draft a patent application that provides the widest possible scope of protection, and prosecute it, in a synchronized manner in all territories, until it is allowed.

Dealing with the inventors: It is very important that the patent attorney speaks the language of the inventors, and in this respect, there is an advantage of having a patent attorney with real life experience from the industry. In most cases, the inventors are a bottleneck in the process, and a good patent attorney has to be able to do the work without burdening the inventors, but still while obtaining all relevant information for delivering a good patent application. Dealing with the inventors requires inter-personal skills that a good patent attorney must have.

We, at Shalev, Jencmen & Co. believe in the following:

Human interface: We believe that we have the ability to connect with our clients, both the executives and the technical experts.

Broad understanding of the business Eco-system: We have the ability to understand the client's business needs and current stage of development (pre-seed, seed, round A, etc.), as well as the competition, the business environment and the technical field of the clients. We see ourselves as the long arm of the client, consulting him in the IP field, and we are committed to the client's success. We do not see ourselves as contractors that are just here to do the job, we think of ourselves as part of the client's success.

Technical skills: We are very technical, with real-life experience from the Hi-tech industries. We understand the technology, we know the bottlenecks, we speak the same language.

We invite you to a free intro meeting!

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AMY-C Building

24 Ha-Nagar St.

Hod Hasharon 4527713,

Israel

Email: Office@il-ip.com

Phone: +972-98-933000

Fax: +972-98-933001

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