You’ve relocated your tech company to Florida. Good decision. However, Florida law governs your business in Florida. While this seems intuitive for employment, land use, non-competes and office leases, what about patents? Patents are exclusively federal, right? Not entirely. State law governs patent ownership. Accordingly, only counsel admitted to the Florida courts may legally opine on patent ownership in Florida. Moreover, if you do not have clear title to an invention, then all the money you spend on the patent process is for someone else.
Florida’s Elite Patent Counsel
According to the United States Patent & Trademark Office, only 1,131 registered patent attorneys practice in Florida. However, many of them are retired or do not concentrate primarily on intellectual property. Significantly, the most elite patent attorneys in Florida are Board Certified in Intellectual Property. Moreover, only 140 out of approximately 80,000 attorneys in Florida have this qualification. Consequently, only 0.175% of Florida attorneys are Board Certified in Intellectual Property Law.
What does it take to be Board Certified?
Board Certification is an extensive process to identify lawyers who practice intellectual property law with special knowledge, skills, and proficiency. Moreover, it evaluates character, ethics, and reputation for professionalism. The minimum standards include:
- Practice of law for at least five years;
- Experience in one or more of the four areas of intellectual property law: patent prosecution, patent infringement litigation, trademark law or copyright law, in the five years immediately preceding application;
- Substantial involvement in the specialty of intellectual property law — 30% or more — in the three years immediately preceding application;
- 45 hours of approved intellectual property law certification continuing legal education in the three years immediately preceding application;
- Peer review; and, finally,
- A written examination.
Beware of Fake Credentials
Without directly naming certain “awards” only perhaps the AV-Rated Martindale-Hubble designation is meaningful beyond Board Certification. Martindale-Hubble peer reviews each attorney individually. That is to say, one cannot buy into it. However, there is always a market for marketing. Consequently, each year companies inundate attorneys with “awards” using superlatives. Nevertheless, these “awards” do not evaluate work product nor knowledge of the law. They sometimes claim “peer review” but is are nothing more than getting nominations. Accordingly, beware of attorneys that endlessly promote “Best Attorney” awards.
Hiring the Most Qualified Florida Patent Counsel
Unlike some other areas of law, a potential patent client can easily evaluate a patent firm. Significantly, patents are public record as a matter of law and function. Therefore, look at the types of technologies a patent firm handles. Just as importantly, what types of clients do they represent? See this example of a listing of clients, patent numbers and the technologies granted to Florida patent firm Smith & Hopen (the author of this article). You may also search yourself. The USPTO Patent Full-Text and Image Database provides access according to geography. For example this query:
IS/FL and ISD/$/$/2020
Search results show that from January 1, 2020 to August 18, 2020, 4,581 patents have granted in Florida. In 2019, the total number was 7,301. How do we evaluate specific Florida patent counsel? Use this search:
LREP/hopen and ISD/$/$/2020
This returns all ninety-two (92) patents issued through Smith & Hopen from January 1, 2020 to August 18, 2020. Replace the term “hopen” with the attorney or firm and see how their numbers and patented technology compare. Our firm (Smith & Hopen) also provides a list of representative clients.
Develop a Long-Term Relationship
Moreover, every patent client looking to hire Florida patent counsel should carefully make the right selection for several reasons. First, hire a patent counsel that knows your technology area. You do not have time to teach the fundamentals of your engineering or science. Second, note what types of clients the patent counsel represents. In other words, are they institutional clients that carefully vet all their attorneys? Finally, are they experience and prolific? This is critical because your relationship should be long-term. Thus, the more you invest into the patent counsel, the easier the process becomes.
Hiring a Counselor, Not Just an Attorney
Top patent attorneys have years of exposure to the most successful business leaders. Consequently, they’ve seen what works and what fails. A true asset is a patent counselor that not only understands the law, but advising the client on the best strategy to take. Always hire a counselor over a lawyer. What is the difference between a lawyer and a counselor?
Florida Firm or Florida Address?
Is the patent firm you hired truly “Florida-based” or just an address? Where did the attorneys go to law school? By way of example, every partner at our firm attended our flagship school, the University of Florida in Gainesville. In fact, over 80% of our attorneys attended UF for undergrad or law. Our attorneys also received degrees from the University of South Florida and the University of Central Florida. If you are doing business in Florida, find patent counsel that is truly connected to the state.