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Communicating with your attorney

February 25th, 2019 / By: / Feature

Tips for working effectively with your intellectual property counsel.

Preparation for meeting with counsel and healthy communication can help maximize an inventor’s intellectual property protections. For example, when seeking patent protection, inventors should always think carefully about the “big picture” benefit offered by their invention and communicate that benefit to their patent attorney. This ensures the attorney fully understands the invention and can then seek to maximize patent protection.

Moreover, businesses can minimize legal fees by providing attorneys with needed information at the outset rather than providing information in piecemeal fashion. Thus, preparation and communication can be key to effectively working with intellectual property counsel. To guide companies new to seeking intellectual property, or provide a refresher to the experienced, this article describes how a hypothetical company, ABC Textiles, can best prepare for its first meeting with counsel by highlighting examples of different types of information that should be collected before the meeting.


Chemist X, an employee of ABC Textiles, develops a new polymer—Polymer Y. The polymer exhibits many attractive properties: it is durable, lightweight, water-resistant and produced using readily available materials. To create Polymer Y, Chemist X uses a three-step process that combines both new and well-known chemical techniques. Using the lightweight and water-resistant material, ABC Textiles wishes to market a new clothing line named WaterGone.

Patent protection

ABC Textiles should pursue patent protection for Polymer Y by filing an application with the U.S. Patent and Trademark Office (USPTO). To better assist its attorney, the company should first collect several pieces of information. Specifically, the inventor should consider how Polymer Y fits into the picture of its overall business.

The true value of a patent comes from when competitors, who examine your patents, determine they are unable to offer a competing product because your patents block them. Thus, Chemist X should think carefully about how a competitor could offer a competing product. This information should be shared with the attorney so that she can prepare a patent application that truly protects ABC Textiles’ business, as well as the innovations relating to Polymer Y.

Next, ABC Textiles should inform counsel of any public disclosures, demonstrations or sales made of Polymer Y. These disclosures often occur, for example, during trade shows or similar conferences. The United States offers inventors a year-long grace period to file patent applications after such disclosures. After a year, the disclosure can be used by the USPTO to reject the application. Because time is of the essence, ABC Textiles should compile information on all public disclosures, demonstrations and sales made of Polymer Y before its meeting with counsel to ensure valuable patents’ rights are not lost.

Third, ABC Textiles should disclose all documents and things potentially “material to patentability”—that is, documents helpful in assessing whether the invention deserves patent protection. Inventions that are, for example, obvious variations of known technologies do not warrant patent protection, and documents establishing their obviousness are considered “material to patentability.” Failure to disclose known documents “material to patentability” to the USPTO cannot only result in loss of patent rights, but can culminate in costly damage awards.

If, for instance, Chemist X relied upon research papers or textbooks to develop Polymer Y, those documents are likely “material to patentability.” If the company intentionally withheld those documents and later asserted their patent, ABC Textiles could lose its patent for failing to disclose this information to the USPTO and could be liable for defendant’s attorney fees. For that reason, ABC Textiles should err on the side of caution by informing its patent attorney of all potentially “material” documents. If appropriate, the attorney will disclose those documents to the Patent and Trademark Office.

Trade secret protection

Next, ABC Textiles should consider retaining its three-step process as a trade secret. Because of the difficulty in determining a competitor’s manufacturing process steps, companies often seek patent protection for products while retaining the process for making them as trade secrets. Trade secrets differ from patents in that they have indefinite terms, which last for as long as the invention is kept secret. If trade secrets are reverse engineered by competitors or otherwise become public knowledge, they lose protection immediately. For that reason, deciding between patent and trade secret protection can be an important decision.

ABC Textiles should provide counsel with information to allow the attorney to ascertain whether the manufacturing process can be protected as a trade secret. First, the company should compile information on the steps it has taken to maintain the process’s secrecy. For example:

Signs are posted warning employees to keep the production process confidential

Key employees are required to sign confidentiality agreements

Visitors to the plant are barred from viewing the production process

Documents about the production process are marked confidential

Contractors are required to sign confidentiality agreements

Knowing the steps taken to maintain secrecy will enable the attorney to better evaluate the risks associated with trade secret protection.

Second, ABC Textiles should inform counsel of the process’s susceptibility to reverse engineering. If the process can be easily reverse engineered, the company should seek patent protection for it instead. Valid patents survive for twenty years, but trade secrets provide no such guarantee. If fully informed as to the process’s susceptibility to reverse engineering, counsel can better advise ABC Textiles on protecting its intellectual property.

Third, the company should inform counsel of any third-party entities, such as contract manufacturers, with access to the manufacturing process. With full knowledge, the attorney can ensure contractual safeguards are in place to prevent or guard against public disclosure.

Trademark protection

Finally, ABC Textiles should seek trademark protection for the WaterGone name and accompanying logos by filing applications with the USPTO. Before meeting with trademark counsel, ABC Textiles should determine the categories of products it would like to sell under the WaterGone name and logos. If no similar trademark exists in the product categories, counsel will be able to ensure the broadest possible protection. ABC Textiles should also inform its attorney whether the WaterGone name and logos are “in use.” The trademarks are “in use” if they are placed on goods for sale within the specified product categories.

Companies can ensure stronger intellectual property protection by effectively preparing to meet with counsel and maintaining healthy lines of communication. To help a company meet its business objectives, attorneys require a true understanding of the company and competitive landscape. This can only be achieved by partnering with your attorney and thinking strategically about how your newly discovered inventions fit within the context of your company’s intellectual property portfolio.

Mareesa Frederick is a partner in the Finnegan law firm, Washington D.C. Her focus is on intellectual property litigation, with a particular emphasis on Section 337 proceedings before the International Trade Commission (ITC). She also has expertise in pre-trial strategy, strategic licensing opportunities and patent portfolios.