Angel Investment Process: Where Do IP Attorneys Come In

Tom Williams of McGarry Bair

Back in April, we met a patent attorney through Greg George, who suggested we do a post on intellectual property (IP).

Law? IP? *yawn*

Before you doze off, wait! This patent attorney happened to be McGarry Bair’s (@McGarryBair) Tom Williams (@RealGTom), who’s fun, witty, and enthusiastic – not your typical lawyer.

In fact, McGarry Bair isn’t your typical IP law firm either. Read Part 1 of the interview, Tom Williams of McGarry Bair: Implications of IP for Angel Investors, for a more detailed introduction, and learn about the various forms of IP and how IP produces money-making opportunities.

In Part 2, IP Mistakes Startups Make That Could Jeopardize Your Angel Investment, Williams describes several common mistakes startups make, provides an overview on IP insurance, and points out why most startups don’t have such insurance.

Here, Williams explains how IP attorneys can help investors in the investment process and how patent attorneys are different from other IP attorneys.

Where Do IP Attorneys Come In

In Profiting From Promising Startups: Improving the Odds (Part 2), we mentioned that you can seek help from an experienced lawyer to assess or reduce product risks. This is where an IP attorney comes in.

An IP lawyer can help you evaluate a potential investment opportunity. Williams’ firm, McGarry Bair, for example, offers due diligence services to investors. It can help you

• review a company’s IP holdings;
• evaluate roadblocks to product commercialization or product lines expansion;
• evaluate potential flaws in a company’s IP;
• work with trained valuation professionals to valuate and price the IP;
• perform chain of title analyses; and
• prepare IP transfer licenses and/or assignments to help prepare closing documents.

IP Attorney / Patent Attorney

According to Williams, IP attorneys have a lot of sub-specialties. Some do trademark or copyright only, some are patent attorneys as well.

A ‘patent attorney’ actually has a special meaning. It’s someone who’s obtained an approved hard-science undergraduate degree, went to law school, passed a state bar, and passed the Patent Office bar examination.

So, patent attorneys can have a number of technical specialties as well as legal specialties. Some are better at mechanical inventions, some at electrical, computer, chemical, pharmaceutical, etc.

So if you’re looking for an IP attorney to help you or your newly-formed angel group evaluate opportunities, you need to first determine your needs. Will a trademark or copyright lawyer suffice, or is a well-rounded patent attorney more desirable?

No matter what your requirements are, Williams stresses that working with someone you like is just as important.

Just for Fun

VH: Any funny anecdotes you’d like to share?

TW: It might be an indicator of the type of work we do that a “funny anecdote” about patent law isn’t popping right into my head.

But you certainly can’t say that the Patent Office doesn’t have a sense of humor, what with the new method of swinging on a swing (US6368277) or the “peanut butter and jelly sandwich” patent (US6004596).

Not everything is the light bulb…

VH: Who was your favorite cartoon character as a kid? We know it’s not Scooby Doo.

TW: Has to be Calvin of “Calvin and Hobbes” by Bill Watterson.

Calvin’s father was a patent attorney in the comic strip, and Mr. Watterson’s father was a patent attorney and worked at the Patent Office.

I mean, come on, who else has created a patent attorney cartoon character?

Now, if Batman’s alter ego was only a patent attorney…