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General Practice Firms, Big IP Boutique Partnerships Provide Needed Specialization
Published By Daily Business Review July 16, 2019

Co-authored by Alejandro Fernandez (Managing Shareholder, Florida Office) and Amanda Kreger (Summer Associate)

As technology booms across South Florida, general practice (GP) firms with limited patent resources face ever-more complicated and technical patent questions. Such questions are sometimes so narrow and specialized that few attorneys in the United States have the measure of technical experience needed to provide solid answers. Thus, with increasing regularity, GP firms in South Florida have clients that need highly specialized patent attorneys. Consider this: One sunny day, a health care client calls on its go-to GP firm with patent questions about a big data analytics software for high-growth medical groups. Later that day, another client calls with questions about a foray into citrate-based biomaterials. Later still, a client calls regarding patentability of technology for using computer vision to integrate real world structures into machine learning systems. Even in one of the few South Florida GP firms with an experienced patent attorney, chances are that their particular patent attorney is not experienced in precisely the technical fields of your clients.

Given the limited patent resources of Florida’s GP firms, an attorney that receives calls for specialized patent counsel from a technology client is sure to experience agita. Either the attorney relies on a more generalist patent attorney to provide elementary patent counsel to a client with highly specialized needs, or they refer the client away. In South Florida, neither solution appears ideal. On the one hand, a generalist patent attorney, by definition, is likely unaware of the challenges that a client faces in a hyper-technical niche, and is almost certainly not current on the state-of-the-art patent law issues in that particular niche. Getting up to speed under these circumstances is likely time or cost prohibitive. On the other hand, to refer the client elsewhere, the referring attorney encounters the practical challenge of finding a patent attorney that is sufficiently specialized in an exquisitely narrow field that the referring attorney may understand at a very basic level. Turning back to the earlier examples, the identity of a hyper-technical patent attorney is not so obvious for data-handling software in health care, citrate-based biomaterials, or computer vision and machine learning. Of course, there is also the concern that referring the client to an unknown attorney at an unknown firm could lead to other mishaps that reflect poorly on the referring attorney.

The Sweet Spot: GP Firms and Big IP Boutiques

GP firms need not rely solely on a generalist patent attorney at their firm or undertake a time-intensive search for a specialized patent attorney every time a client has a highly technical patent need. Rather, by “partnering up” with attorneys at a big IP boutique, GP firms gain a long-term solution that benefits everyone involved.

The first and principal beneficiaries are clients. They receive top-tier patent counsel that is specialized where appropriate, while confirming that their GP firm places the client’s best interest first. Additionally, the IP boutique is always up to date on the latest developments in IP law, particularly in niche technical fields they encounter often. This aspect is particularly critical as new developments in IP law frequently occur alongside the development of complex technologies. Finally, because the IP boutique has experience handling patent issues in each technical field, the boutique not only solves matters for the client but also anticipates future issues.

The second beneficiaries are the law firms. Ultimately, satisfied clients from a GP firm-IP boutique relationship remember the outcome, the team and the attorney that led the effort. Further, GP firms continue actively representing clients that are growing into high technology fields. However, by relying on big IP boutiques, the GP firms avoid the profit-draining overhead and specialized support required to maintain an unsustainably large in-firm IP group. Moreover, when the need arises in litigations or other large-scale projects, the GP firm can use the resources of the big IP boutique to scale up and keep up without hiring up. Of course, big IP boutiques also benefit considerably. Mainly, the big IP boutiques can make the most of their deep knowledge of a field in representing clients with relevant needs.

The reason it should be a big IP boutique is to ensure it consistently has the depth to handle all types of specialized technologies. This level of depth is usually found in IP boutiques with 50 or more patent attorneys, patent agents and scientific advisers. Such firms have experience in practically every conceivable technical field. Because of this, a single call to a trusted attorney at a big IP firm is nearly certain to yield the desired patent specialist. By comparison, small IP boutiques typically have strengths in a limited number of technical fields. As a result, GP firms that rely on small IP boutiques need relationships at multiple IP boutiques to cover the technology universe.

Ensuring successful relationships between GP firms and big IP boutiques requires heavy investments and careful tending by IP boutiques. First, the IP boutique invests time reaching out to and helping establishing a trusted relationship with the GP firm. The IP boutique maintains open and consistent communication one-on-one with various attorneys at the GP firm. It provides IP-related CLEs and answers day-to-day questions for the firm without charge. It can even attend meetings and pitches shoulder to shoulder with the GP firm. Most importantly, once entrusted with a client of the GP firm, the IP boutique meticulously treats that client with the same level of priority and care as it does the clients it originates.

This everybody wins approach to solving highly specialized patent issues is likely to continue growing as clients and GP firms see the results, and as technology expands in South Florida.

Reprinted with permission from the July 16, 2019 issue of Daily Business Review. ©2019 ALM Media Properties, LLC. Further duplication without permission is prohibited. All rights reserved.