When to Obtain Legal Counsel

The decision to engage legal counsel is a bit like Justice Potter Stewart's famous quote about obscenity. Justice Stewart remarked that he could not provide a precise definition of obscenity but that he would know it when he saw it. Similarly, knowing when to obtain the assistance of experienced legal counsel is a judgment call. For example, the temporary use of a trademark may not require registration with the PTO. Similarly, even a company's application for trademark registration for a key mark may be handled in house, although if the PTO makes objections to the registration, outside counsel may be needed. Most copyright applications can be handled in house. On the other hand, companies that have portfolios of software and other computer-related information should seek outside legal counsel because the issues surrounding software protection continue to shift and evolve. In nearly all cases, patent applications should be handled by experienced patent attorneys. Additionally, any allegation that a company is infringing the intellectual property rights of another should be referred to legal counsel to ensure that the company's rights are adequately and promptly asserted and protected. Because companies may be liable for punitive damages for infringing activities after receiving notice of an infringement, obtaining advice of counsel after receiving such a notice is critical.

It is important to obtain experienced legal advice. The field of intellectual property law, which was for many years a backwater in the legal profession, has achieved a certain cachet. Thus, a number of law firms and practitioners announce that they are specialists in the intellectual property field, although their experience may consist of having attended a few lectures. Do not be afraid to ask about experience and qualifications. Competent legal professionals are ready and often pleased to explain their experience and credentials. Because the issues surrounding intellectual property can be highly technical, requiring a thorough understanding of software development, mechanical engineering, and the Internet, not all lawyers are equally familiar with the issues. Moreover, a practical understanding of the workings of the PTO and the U.S. Copyright Office is essential. Knowing the ins and outs of the offices, filing fees, and document submission procedures is critical inside information. Companies should retain experienced attorneys who are thoroughly conversant in intellectual property protection, rights, prosecution, and infringement. Attempting to save money by retaining counsel who may be unfamiliar with intellectual property will only result in additional costs in the long run and may lead to the loss of critical rights and defenses. Money expended to protect intellectual property is nearly always worthwhile.