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putting patent caselaw into practice

The embedded patent attorney - what it means to me

There has been great discussion of late on the concept of the Embedded Patent Attorney (here, here, here, and here).  The EPA is a concept I’ve kept in my mind for years (I actually think the concept and the name itself was relayed to me by a client), but have never actually defined it.  I tried to write a one-sentence definition and failed.  I did, however, create the following lists of what an EPA is, and what an EPA isn’t:

An embedded patent attorney:

…is willing to continually and consistently invest his time to learn the business plan and objectives of his client

…manages the business knowledge he gains and applies it in his handling of the client’s legal matters (from claim drafting to license negotiations to litigation)

…provides valuable business information to the client regarding the intellectual property aspect of the client’s business climate (all done as part of his time investment)

…has a long-term outlook on the relationship with the client

…has or develops a passion for the client and the client’s industry  (I’ve seen this with ‘car guys’ in Detroit and ‘gene jockeys’ on the coasts — to effectively become embedded, I think the attorney must have passion; without it, he is unlikely to continually invest the required time)

…willing to put down the briefcase and roll-up his sleeves alongside the client’s inventive personnel (I’ve got great stories here…)


An embedded patent attorney is not:

…interested in billing every quarter hour of his time spent with/on a particular client (this kills it for oh so many reasons, cost being only one)

…someone with a huge “book of business” or a desire to build such a book (by definition, an attorney can truly be embedded with only a small number of clients.  Note, though, that attorneys with a large book can effectively be embedded with a small number of clients and have other attorneys become embedded with his other clients.  For this to work, the attorney must recognize his inability to become embedded with new clients and ensure that someone else at his firm is doing it.  This is truly a rare bird in law firms.  I’ve seen one.)

…someone with a big ego (see the briefcase/sleeves point in the first list)

I think these lists, together, provide a working model for the EPA concept.  I’m still working on the one-sentence definition.  Of course, the ‘P’ from EPA could really be any specialty…I’m just partial to patent attorneys.


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