March 01, 2016

Always Know Thy Client

Pervin R. Taleyarkhan

We can’t please everyone. And in the practice of law, this can become particularly apparent. Whether you are giving advice to a client, writing a legal brief, or arguing in court, there will almost always be at least one other party besides your client affected by your work. A great example of this takes place in a university technology transfer office (TTO).

Most university TTOs are responsible for shuttling the university’s intellectual property into the marketplace. Universities produce patents, copyrighted works, trademarked products, and even innovations where the market advantage is exploited utilizing trade secret laws. One of an IP counsel’s roles is to help the TTO secure the protection needed to enhance the TTO’s negotiating ability with potential licensees. If patent protection within the United States is the form of desired IP protection, the IP counsel’s duty is to secure the most comprehensive IP protection possible on a particular technology or innovation resulting from an inventor’s research.

Understanding the true potential and breadth of uses of this technology that may be licensed often requires the inventor’s help and expertise. Patent counsel, therefore, has to work with both the TTO (the client) and the inventor. Counsel seeks the inventor’s input on the technology’s description, the potential markets it can cover, and any related work that may help to build a robust patent portfolio for licensing. Patent application drafts are exchanged. Revisions and edits are made, until, finally, the application is ready for submission to the U.S. Patent and Trademark Office.

But who decides when the application is ready for filing? The answer is the client. The client is usually the entity that hired the patent counsel—the TTO. But the TTO may have had very limited involvement in the relationship leading up to the final patent application draft. Absent an agreement to the contrary, even if most of the communication has been between the inventor and counsel, the TTO must be consulted and sign off on the application. Not following this key step can cause great tension between the TTO, the inventors, and IP counsel.

Always be aware of who your client is and respect that client. Respect throughout the course of creating a legal work product goes a long way toward securing solid, lasting relationships. While it is true that we, as lawyers, cannot always please everyone, if there is one party we must please, it has to be the client.

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Pervin R. Taleyarkhan

Pervin R. Taleyarkhan is an intellectual property attorney the at Purdue Research Foundation Office of Technology Commercialization.