Tuesday, 3 September 2013

10 Observations on Clients by a European Biotech Patent Attorney

This is a set of observations about clients that may be helpful in providing the most helpful assistance to them.

1.       Clients who always have an optimistic and ambitious approach to claim breadth.  There is nothing wrong in this as long as they recognise the possibility of having to narrow claims at some stage.  An attorney must be careful to ensure that the breadth of the claims does not become detrimental to the case.  It is possible to have a situation where the logic that supported the broader claims undermines the patentability of narrower claims.

2.       Clients who have the expectation that the granted claims will be of similar scope to the claims which are originally drafted.  The client must understand that it is difficult to predict the claim scope that will be allowed and the attorney must be able to gauge the claim scope that the client will be comfortable with.  Attorneys should recognise though that in some business situations a changing claim scope is an unhelpful distraction, and there are not going to be any advantages to being too ambitious.

3.       Clients who are too pessimistic and have a tendency to claim too narrowly.  Whilst respecting their wishes, all options should be pointed out to them.  Sometimes this happens with clients (and attorneys) when they have bad experiences in the past with difficult cases.  There can also be a perception that narrower claims are less likely to be opposed or litigated, which may be true in certain areas.  In addition clients from a chemical or mechanical background sometimes find it difficult to judge a fair claim scope in biotech cases.

4.       Clients who get involved in all aspects of patent strategy.  Such clients can be more demanding, but their full participation often provides a very fruitful approach.  In the process the client becomes more educated about the patent system leading to a better quality of decision-making.

5.       Clients who keep a distance.  Some clients don’t get involved as much as they should.  However they still need to be told about all options at every stage and they need to be aware of all assumptions that an attorney makes about their patent needs.

6.       Clients with no money.  For some clients keeping costs to a minimum is very important.  Clearly the attorney has to adopt appropriate strategies, such as avoiding complex examination and the filing of divisionals.  Minimising the number of territories in which patent protection is pursued is clearly going to have to be considered.

7.       Clients who are too scientific.  Scientists can sometimes be too critical when reviewing patent applications, thinking of them in the same way as peer-reviewed scientific journals.  However patent applications are looked at in a different way by Examiners.  There will be a less critical approach to the science, and more emphasis on the contribution made.

8.       Clients who have too many ideas.  It can be very interesting to work with a creative client but they must always be made aware of the implications, costs and future costs of every decision.  They need to be aware of the type of supporting data that is needed for the claims they would like to pursue.  In addition, complex strategies should be avoided where possible.  These can sometimes confuse the business people and might not be implemented in the correct manner a few years down the line when the details have been forgotten and the people working on the case might have changed.

9.       Clients who are cynical about the patent system.  Some clients can be very negative, especially when cases become difficult. However a positive attitude is always best together with an appreciation of the Examiner’s position.  In biotech one must accustom oneself to remaining enthusiastic when cases become difficult, remembering there are always many options that can be pursued.

10.   The real client is not the person instructing you, but the company they work for.  Whilst it is important to impress and carry out the instructions of the specific person instructing you, one must always keep an eye on the best interests of the client company.  That might mean preserving other options as best as possible in case in case the circumstances of the company do change.

You may also wish to see related articles Top 10 Problematic Things for Patent Attorneys to Advise On and Top 10 Pieces of Advice to Applicants.

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