5 Key Questions to Ask When Hiring a Houston IP Lawyer for your Startup and Business
A strong Intellectual Property (IP) lawyer is a crucial ally from the inception of your startup and throughout the lifecycle of an established enterprise. You’ll need to make IP-related business decisions tailored to your company’s needs, considering factors such as the issue your company aims to address, your business strategy, competitors, and more. In most cases, safeguarding your company’s IP should be viewed as both important and urgent to the business.
Choosing an IP lawyer and law firm should be a well-thought-out decision, accompanied by thorough due diligence. Your relationship with your IP lawyer will be long-term, and selecting the wrong partner could be catastrophic for your business.
Here are five high-level questions to ask potential IP lawyers as part of your due diligence process:
Can you manage all of my company’s IP requirements?
IP encompasses various aspects of a business or product, with the most common needs arising in the following areas:
- Patents: Safeguard inventions, such as a device, process carried out by the device, manufacturing the device, etc.
- Trademarks: Protect identifiers, like a brand name or logo used for selling or marketing the product
- Copyrights: Guard creative works, like drawings, articles, etc.
- Trade Secrets: Defend information that can offer a competitive edge
Initially, you may need IP services for filing or registering your IP. However, as your business expands, you’ll require other IP services, such as freedom to operate (FTO) analysis, infringement analysis, and trademark clearance. It’s often beneficial to have a single firm handle all aspects of intellectual property . For instance, at a full-service IP law firm in Greater Houston, your client relationship team or manager will develop and execute a comprehensive strategy tailored to all aspects, depending on your company’s specific situation.
Have you worked on a comparable case or matter before?
While your startup’s IP is unique (which is what makes it valuable), it’s essential to ensure that you are represented by a lawyer with experience in your IP’s technical area or target market. For instance, if you want to patent an innovative machine learning solution, you should choose a law firm with a specialized practice group that has patent lawyers with computer science or engineering backgrounds and experience in successfully filing and obtaining such patents. Lawyers with the right expertise can often save you time and money while achieving the best outcome. Request specific examples and why they might be considered similar to your situation. Follow up by inquiring about the specific lawyer(s) who will handle your matter and ask about their individual backgrounds and experiences.
Would you have any conflicts of interest representing my company? What happens if a conflict arises in the future?
This question can be a good follow-up to the previous one. Note that lawyers are obligated to inform you of any conflicts of interest, even if you don’t ask. For example, a conflict exists if the lawyer or law firm represents one of your potential competitors, limiting their ability to represent you and/or your competitor. It’s a good idea to check how the firm might handle such a conflict that might arise in the future. For instance, there could be a conflict of interest if your company expands into a market where the firm has an existing client.
What are the fees? Do you charge on an hourly basis or a flat-fee basis?
Your IP lawyers will be responsible for building your IP portfolio – your startup’s intangible assets. The invoice should not come as a surprise, so ask for upfront estimates. Determine if the invoices you receive will be based on a flat fee for service or an hourly charge. If billed hourly, in what increments is time billed? While a precise quote may not always be feasible, you should have a solid understanding of the potential costs involved.
What if I need international assistance?
In today’s global market, this question may actually be, “Can you provide international support?” IP rights are confined to the jurisdictions (i.e., countries) in which they are filed. For instance, a U.S. patent or trademark is only enforceable in the U.S., not in Europe or any other country outside the U.S., and vice versa. At a full-service Houston IP law firm like D’Ambrosio & Menon, PLLC, our lawyers will comprehend your business strategy and develop your specific IP plan accordingly. For instance, your company may plan to sell, manufacture, distribute, or conduct research outside the U.S. The firm can determine the appropriate mix of IP to prevent competitors from bypassing your IP assets. Additionally, if your startup’s exit strategy involves acquisition, it can be crucial to cover potential jurisdictions important to your acquirer.
Undoubtedly, you and your lawyer will work closely on several critical matters over time. It’s essential to partner with someone who makes you feel comfortable and valued throughout this journey while offering honest and informed IP advice. Your lawyer should recognize and present you with various IP-related options tailored to your specific situation. The questions above may not be a comprehensive method to evaluate a potential IP lawyer, but they can help gather data points. Did the lawyer come prepared? Did they ask questions about your startup’s goals and vision? What were the next steps suggested? Did they follow up with an email or call after the meeting? These data points can offer insights into your potential IP lawyer’s dedication, responsiveness, competence, and attitude.
At D’Ambrosio & Menon, PLLC, we have the highest level of experience and qualifications in intellectual property. Schedule a consultation, contact us today.