Big Firm/Small Firm Comparison
Whether a general purpose IP firm or a patent
specialty boutique firm is right for you
There are good large firms,
and there are good small firms, but there is no general rule as to which firms
are better. There are advantages to
each, as I discuss here.
A large firm can provide many specialists under one roof. A company that needs to file five patent applications, six trademark applications, and a civil complaint can find such services in a single firm that is large enough. Regarding patent applications, a large firm can provide specialists who are knowledgeable in a variety of technologies.
A small firm is less likely to offer as large a variety of services. Some customers may nonetheless find what they need in a small firm, so the size does not matter for them.
In my boutique, I specialize in the preparation and prosecution of electrical and mechanical patent cases. For details, click here and here. If you need assistance for pharmaceutical or gene sequence cases, as well as trademark cases, you would need to use a different firm (just as when you need your car and your watch fixed, you go to different businesses, and that is not hard to do). Although I represent clients’ interests in patent offices worldwide, I specialize even further in U.S. practice. Using my experience as a former U.S. patent examiner and former Washington, D.C. patent attorney, I prepare patent applications considering how they will be viewed by the patent examiners and the courts. I further prosecute the applications accordingly, and when necessary I appeal rejections to the Board of Patent Appeals and Interferences (and win). Although I do not work with trademarks or gene sequences, what I do work with seems to suffice for my clients.
A large firm can have many paralegals and other support personnel allowing for specialization among the staff. One group can work exclusively on filing PCT applications while another prepares information disclosure statements (IDSs) for filing and another works on litigation.
A small firm may require its support staff to accept multiple responsibilities. For example, a single paralegal may need to both file PCT applications and prepare IDSs, which is no overwhelming challenge. Some smaller firms could require at times that its patent attorneys become involved with this. Regardless of how the attorneys feel about this, this does not affect the client. The work still gets done.
A large firm will not likely close when one or a few attorneys are called to miluim or become sick. For client matters that just cannot wait until an absent attorney returns, another attorney from the same firm can address the matter, if another attorney with the right skills is available.
For small firms, I will discuss the ones with which I am familiar. When no one within the firm can cover for an absent attorney, and if the matter really cannot wait, the firm uses an attorney of another firm based on a pre-established agreement. The work is not neglected. It should be noted also that only a relatively small subset of tasks really need to be done on such short notice. Further, if your attorney became intimately familiar over time with your case, would you really want to transfer the duty of care to another attorney instead of just waiting another day or two for the first attorney to return to work? (Regarding miluim, I do not get called, although I wish I did. The best I do is cover for others who are called.)
I must make a final comment about specialization: I think it is great – to a point. I have chosen to specialize in preparing and prosecuting patent applications, but I do not care to run a firm that is “over-specialized.” For example, I generally do not believe that it works as well to the client’s benefit to have one attorney drafting claims to a patent application, another attorney writing the specification to go with the claims, and yet another attorney prosecuting the application after examination has begun. Each task can be performed better with knowledge of how past tasks were done and with anticipation of how the future tasks will be done. I personally draft claims, write supporting specifications, prosecute applications, and appeal rejections. Further, I do not write claims before I thoroughly interview inventor/clients to determine what is best for their goals. I am familiar with firms in which the party (sometimes not a licensed patent attorney) drafting the application never meets the clients or discusses the invention with the inventors, and I believe it makes the task of writing a good application more difficult than it needs to be.
I personally believe that the size of a firm is only one of the factors to consider when selecting a firm, and it is not the most important factor. More important is how the particular firm operates, how well it knows the law, and how well it applies that knowledge. At this time, I present some relevant case studies:
A large firm can provide many specialists under one roof. A company that needs to file five patent applications, six trademark applications, and a civil complaint can find such services in a single firm that is large enough. Regarding patent applications, a large firm can provide specialists who are knowledgeable in a variety of technologies.
A small firm is less likely to offer as large a variety of services. Some customers may nonetheless find what they need in a small firm, so the size does not matter for them.
In my boutique, I specialize in the preparation and prosecution of electrical and mechanical patent cases. For details, click here and here. If you need assistance for pharmaceutical or gene sequence cases, as well as trademark cases, you would need to use a different firm (just as when you need your car and your watch fixed, you go to different businesses, and that is not hard to do). Although I represent clients’ interests in patent offices worldwide, I specialize even further in U.S. practice. Using my experience as a former U.S. patent examiner and former Washington, D.C. patent attorney, I prepare patent applications considering how they will be viewed by the patent examiners and the courts. I further prosecute the applications accordingly, and when necessary I appeal rejections to the Board of Patent Appeals and Interferences (and win). Although I do not work with trademarks or gene sequences, what I do work with seems to suffice for my clients.
A large firm can have many paralegals and other support personnel allowing for specialization among the staff. One group can work exclusively on filing PCT applications while another prepares information disclosure statements (IDSs) for filing and another works on litigation.
A small firm may require its support staff to accept multiple responsibilities. For example, a single paralegal may need to both file PCT applications and prepare IDSs, which is no overwhelming challenge. Some smaller firms could require at times that its patent attorneys become involved with this. Regardless of how the attorneys feel about this, this does not affect the client. The work still gets done.
A large firm will not likely close when one or a few attorneys are called to miluim or become sick. For client matters that just cannot wait until an absent attorney returns, another attorney from the same firm can address the matter, if another attorney with the right skills is available.
For small firms, I will discuss the ones with which I am familiar. When no one within the firm can cover for an absent attorney, and if the matter really cannot wait, the firm uses an attorney of another firm based on a pre-established agreement. The work is not neglected. It should be noted also that only a relatively small subset of tasks really need to be done on such short notice. Further, if your attorney became intimately familiar over time with your case, would you really want to transfer the duty of care to another attorney instead of just waiting another day or two for the first attorney to return to work? (Regarding miluim, I do not get called, although I wish I did. The best I do is cover for others who are called.)
I must make a final comment about specialization: I think it is great – to a point. I have chosen to specialize in preparing and prosecuting patent applications, but I do not care to run a firm that is “over-specialized.” For example, I generally do not believe that it works as well to the client’s benefit to have one attorney drafting claims to a patent application, another attorney writing the specification to go with the claims, and yet another attorney prosecuting the application after examination has begun. Each task can be performed better with knowledge of how past tasks were done and with anticipation of how the future tasks will be done. I personally draft claims, write supporting specifications, prosecute applications, and appeal rejections. Further, I do not write claims before I thoroughly interview inventor/clients to determine what is best for their goals. I am familiar with firms in which the party (sometimes not a licensed patent attorney) drafting the application never meets the clients or discusses the invention with the inventors, and I believe it makes the task of writing a good application more difficult than it needs to be.
I personally believe that the size of a firm is only one of the factors to consider when selecting a firm, and it is not the most important factor. More important is how the particular firm operates, how well it knows the law, and how well it applies that knowledge. At this time, I present some relevant case studies:
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Regardless of whether you select large or small firm, you should insist
that you meet the individual patent attorney that will be working on your
matters. Among other issues, you want to
make sure that he/she stays informed of the changing law. You want do not want a major mistake made on
your case, certainly if it could have been avoided.
I prepared a report of case studies showing mistakes that could have been avoided. A patent practitioner that stays informed of the changing law is less likely to make such mistakes and more likely to learn from the experiences of others. For a copy of the report and to opt into my mailing list, click here.
I prepared a report of case studies showing mistakes that could have been avoided. A patent practitioner that stays informed of the changing law is less likely to make such mistakes and more likely to learn from the experiences of others. For a copy of the report and to opt into my mailing list, click here.