Patents, trademarks, and copyrights, are the three main components of intellectual property, and the enforcement of intellectual property rights is essential for global innovation, economic growth, and economic independence. Per the 1952 Patent Act and the 1976 Copyright Act, inventors, artists, and authors have exclusive rights over their original works. The Trademark Act of 1881 also offers businesses and trades the right to distinctive identity as a means of curbing unfair business practices. Federal courts in the United States have subject matter jurisdiction over patent and copyright cases, and they share concurrent jurisdiction with the state courts over trademark cases. According to data published by the Administrative Office of the United States Courts, the number of copyright filings made between 2017 and 2018 increased by almost 100%, with trademark filings increasing by more than 9% during this period. A total of 3,694 patent filings were also made in 2018. These types of cases are typically handled by a specialized group of attorneys known as Intellectual Property attorneys.
Intellectual Property attorneys are generally involved in lawsuits relating to rights of original ownership, exclusivity, and business identity encroachment. Specifically, the services that these specialist attorney's offer include:
- Preparing for patent application and licensing
- Patent litigation
- Trademark item research, advisory, and litigation
- Copyright registration and litigation
Performing these services requires a sound knowledge of the relevant laws and legal procedures as well as solid practice experience. Therefore, before you retain the services of an intellectual property law attorney near you, you must ask the following questions:
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Where Are You Licensed to Practice Intellectual Property Law in the State You Are?
You need to ensure that an intellectual property attorney near you is authorized to practice law in your state before you consider hiring. Also, given that the majority of intellectual property rights cases are heard in federal courts, it is even more important that your attorney meets the requirements to legally represent you in the relevant federal court. You can employ official websites to verify an attorney's state bar and federal court licensing status.
For attorneys to be licensed for the practice of law in a state, they must first scale through the Law School Admission Test which is administered by the Law School Admission Council. They then proceed to attend an accredited law school and sit for the bar examination of their state of interest after graduation. Although states typically set a Juris Doctor (J.D) degree or Legum Baccalaureus (LLB) as a requirement for writing the state's bar examination, additional qualification criteria may be available in certain states. Successful candidates are then sworn in by the state bar association and can practice law within that state. This is usually the last hurdle and signifies authorization to practice law in the state in question. While state bar admission is a general requirement for admission to practice before federal courts, attorneys are also expected to take an oath of admission before that particular court and pay an admission fee. Note that some federal courts may have additional requirements, and so you should always make sure that your attorney meets all the requirements for that court.
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What Kind of Intellectual Property Work Do You Handle?
The practice of patent, trademark and copyright laws is vast, and even though it is a law specialization in itself, some legal practitioners provide subspecific legal services in this area. Thus, you should question the intellectual property attorney near you on what their specialization is as this ensures that you retain only attorneys that can cater to your specific legal service needs. The specializations of intellectual property law include:
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Copyrights: Authors and artists are granted copyright over their original works such as literary and musical works, pictorial and architectural pieces, and computer software. A copyright grants the original owner exclusive rights to reproduce the piece of work, derive other works from the original work, share copies of the work, and display the work publicly. Copyright attorneys can provide guidance on how to properly copyright a piece of work and how to deal with a copyright violation in a competent court of jurisdiction. Note that you may only claim copyright for works that you have properly registered with the United States Copyright Office. A copyright attorney will provide learned advice on what the best course of action is, such as ensuring that the loss from the violation is worth the time and money and exploring the possibility of an out-of-court negotiation.
- Patents: A patent is a time-bound monopoly granted for an invention or discovery. It bars other persons from using such inventions or novel ideas. Utility patents, plant patents, and design patents are the three main types of patents. Design patents protect new manufacturing designs, utility patents protect novel and beneficial processes, devices, and productions, and plant patent is granted for invention and discovery of new plants. Services that patent law attorneys produce include patent search and application, patent prosecution and appeal, and patent enforcement.
- Trademarks: Trademark attorneys mostly serve businesses. A trademark grants a unique identity to products to allow customers to properly identify the sources and manufacturers of goods. Trademarked items usually include symbols, phrases, words, designs, and other forms of identification marks. Not all marks may be trademarked, and a trademark attorney can provide professional advice on the trademarkable. Besides trademark infringement, a business may lose its trademark if it is not properly licensed or if the trademark is abandoned for three succeeding years without intent to reuse.
- Trade Dress: Just like trademarks, trade dresses are also used by businesses and companies. Trade dresses grant business owners protection over certain physical aspects of their products such as color and shape. A condition is that such shape or color must be known with that particular manufacturer and nor the product in general. Trade dresses can also not be secured for attributes that add functionality to a product.
- Trade Secrets: In cases where a generally unknown piece of information represents a business' most valuable intellectual property, such information may be subject to trade secret laws. These laws aim to protect the information from becoming public knowledge, as that will erode its economic value to the company. To make a trade secret violation claim, you will typically have to prove that the information in question is a trade secret, that you made substantial efforts to avoid public disclosure of the information, and that this information was misappropriated without your approval. Common issues for which trade secret attorneys provide their services include noncompete agreements, nondisclosure agreements, enforcement, and infringement.
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How Long Have You Been in Practice?
It is essential to know how long an intellectual property attorney near you has been in practice before you hire them. While all licensed attorneys have a good understanding of the workings of the law, it is best to only hire ones that have relevant substantial experience in the intellectual property case at hand. With experience handling several cases, your Intellectual Property attorney can properly analyze your case, figure out the loopholes in the opponent's arguments, decide on the best approach strategy, and put together tenable arguments for a strong case.
Attorneys and law firms usually have their years and areas of legal experience spelled out on their websites. Per the American Bar Association's advice, you should ask for a breakdown of an attorney's past cases, covering the exact types of intellectual property cases, and whether they did plaintiff or defense work. An attorney who has handled a high number of cases related to yours will most likely be more qualified to handle your case. However, this may translate to higher attorney fees.
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Do You Charge Fixed or Hourly Fees?
Like all legal practitioners, an intellectual property attorney near you may charge a fixed or hourly fee depending on the terms of engagement. In details, the service fee payment structures that intellectual property right attorneys use include:
- Billable hours arrangement: under this arrangement, payment is based on the amount of time spent handling case activities such as drafting and submitting paperwork, court hearings, and meetings. This arrangement is not advisable if you anticipate that your case may carry on for an extended period. Also, it does not give attorneys any incentives to pursue fast and effective strategies. Hourly rates typically range between $250 to $600 per hour.
- Modified contingency arrangement: This is a modification of the pure contingency arrangement where once the plaintiff receives the claim payment, the attorney receives a pre-agreed portion of it as payment for their legal services. Under modified contingency arrangements, in addition to a contingency arrangement, you will also pay a percentage of the attorney's hourly rate. This method is preferred by intellectual property attorneys because it ensures they do not completely lose out if the lawsuit is lost and no compensation is issued. Also, it deters the client from pursuing frivolous strategies since they will have to pay for any time the attorney spends working on their case. The rate in a modified contingency arrangement will typically be lower than the 33% - 50% average obtainable under pure contingency arrangements.
- Capped fee arrangement: This usually involves setting a maximum limit for the fees to be paid in each phase of litigation, or the entire lawsuit. It is more effective for litigation budgeting and helps you prepare for the total costs that you may incur. The capped fees are usually based on what is obtainable from other similar cases. However, if something substantially upsets these assumptions, then you and the attorney may have to review the caps.
- Flat fee arrangement: Also known as a fixed fee arrangement, involves attending to each case activity as it comes, for a fixed charge. As such, if a particular task takes more time than usual, you would not have to pay any extra fees. Some of the tasks for which a flat fee may be charged include patent search, trademark research, and copyright verification. Fixed fees can cost anywhere between $300 and $3,000.
In most cases, you will be required to pay an initial fee known as a “retainer†which will be used to cover court charges and other fees outside your attorney's service fees. If this fee gets exhausted before your case is resolved, then you will have to pay an additional retainer.
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Do You Charge for an Initial Consultation?
The decision of whether or not to bill for an initial consultation varies among Intellectual property attorneys. In most cases, an initial consultation will be required by intellectual property attorneys near you to determine the best course of action, particularly if the case requires comprehensive analysis. Most times, if you retain the attorney's services, you will not be charged for the consultation. If not, the consultation fee will be the attorney's compensation.
Always inquire upfront with your attorney about whether you will be required to pay for an initial consultation or not and what the exact amount in question is.
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How Do You Keep Clients Informed about Their Case?
Your attorney is expected to inform you whenever there is a change or an update to your case. Also, when you have inquiries to make about the case's status and progress, your attorney should ideally be ready to give you the latest case report. It is advisable to have an existing agreement on a medium of communication between you and your intellectual property attorney such as text messages, phone calls, or emails. You both should also have an understanding of the time, dates, and venue of routine case meetings. In some cases, your attorney may share a personal contact line with you should you need to report an urgent development outside working hours.
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Who Will Actually Do the Work?
Intellectual property rights cases are typically research-intensive. To free up more time for principal legal work, Intellectual Property attorneys near you will normally engage paralegals and legal assistants to handle case peripherals. Note that these assisting workers will remain under the supervision of your attorney, who will be held responsible for their conduct. Also, since paralegals and legal assistants are not licensed professionals their fees are typically lower than those of licensed attorneys. You should consult with your attorney about how many of these workers will be involved in your case and how it will affect your total bill.
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Can You Provide References from Former Clients?
References are simply proof of past cases successfully handled. One essential step in hiring capable legal representation near you for your intellectual property case is to ask for references. By contacting an attorney's past clients, you can verify the attorney's level of professionalism and reputation. While some of the case details may be confidential, a reference can provide you with certain information such as the type of litigation work provided, lawsuit duration, and standard court costs of litigation. However, this information should only be used as a benchmark as it does not imply that the same figures will apply to you.
Before reaching out to an attorney's past clients, it is best to make a list of your inquiries. Many intellectual property attorneys also provide a section for testimonials and reviews on their official websites. Finally, you can also check out platforms such as the Better Business Bureau for online reviews on your attorney.
It is also advisable to contact your state's bar association to find out if an attorney has any past or pending disciplinary actions that may adversely affect your chances of a win in court.
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What Is Your Success Rate?
An attorney's success rate typically refers to the number of times that an attorney has gotten desired outcomes for clients. Many intellectual property law firms, including the ones near you, typically state their success rates on their official and professional websites. Some of these websites also include pages for client testimonials where past clients provide service reviews. However, it is best to specifically evaluate an intellectual property attorney's success rates in cases similar to yours, and not across all the cases that they have handled. To do this, you should ask your attorney for references from past clients that had similar specifics to your case and compare the case outcomes.
You should also seek out court records of these cases in the relevant courthouse to get more details on the lawsuits and authenticate the case outcomes told to you by these references. Note that access to court records is generally determined by individual court rules, and you may be required to satisfy certain requirements, such as making a formal request in writing and paying a fee. You may also be denied access to sealed, classified, or protected records. This usually happens in cases that involve trade secrets or juveniles.
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When Should I Hire an Intellectual Property Attorney?
Whenever you are involved in a patent, trademark, or copyright case, it is highly recommended to retain the services of an experienced intellectual property attorney near you to avoid compromising your case and giving up some of your intellectual property rights. The technicalities involved in understanding relevant intellectual property laws also make self-representation a difficult and time-consuming ordeal. You should always hire an experienced intellectual property lawyer to help you do the following:
- Properly register your patent, trademark, or copyright
- Design an effective protective system for managing a trade secret
- Fight an infringement of your intellectual property rights with the full force of the law
- Negotiate a settlement that adequately compensates you for any violations of your intellectual property rights
Note that it is always advisable to retain the services of an attorney right at the onset of any intellectual property matter that you are involved in.
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What Are the Typical Qualifications Held by an Intellectual Property Attorney?
The mandatory requirements for the practice of law in the United States are obtaining a law degree from an ABA-accredited law school and being admitted into a recognized bar association. In addition to this, some intellectual property attorneys enroll in specialized education programs and obtain board certification from professional associations like the American Intellectual Property Law Association (AIPLA) and the American Bar Association - Intellectual Property Law (ABA-IPL).
Besides educational qualifications, intellectual property attorneys also need to be skilled in negotiation and mutual mediation tactics.