What do you do when one of your clients calls with an intellectual property question?

It’s probably happened to you more than a few times already. A valued client calls, and he or she is looking to patent an invention, register a trademark, or copyright some software. The volume of IP matters that come to your firm doesn’t justify hiring an IP partner. So all you can do is refer your client to an IP attorney who has no connection with your firm and is not accountable to you for the type of service he/she provides to your client. Your IP attorney referral may be just a name you pulled out of a professional publication or website. But your client is looking to you to place them in the hands of someone you can vouch for, someone who will treat them the way you would if you were handling the matter yourself. The goodwill and trust that you’ve spent years cultivating with your client is on the line here — yet you have absolutely no control of the situation. There must be a better way to handle these situations.

Doesn’t it make more sense to establish a regular IP outsource for your firm?

Instead of a series of blind IP referrals, wouldn’t it be better to have an experienced practitioner “on call” to serve your clients’ IP needs? Ideally, such a practitioner would keep you “in the loop”, reporting back to you on the progress of the IP matter and conferring with you on issues that may have repercussions on other legal matters your firm is handling for the client. Ideally, such a practitioner would be working for you as well as for your client, so that the quality of his IP services reflects favorably on your firm and reinforces your firm’s bond with the client. Obviously, a referral outsource to a large firm with an IP practice doesn’t fit the bill here, because the large firm mentality will inevitably come to envision your client becoming their client. And, as the hierarchy of the large firm takes control of the matter, you will be relegated to the back seat, like it or not.

So where do you find an IP outsource that’s truly accountable to your firm?

If you’re looking to fill a niche, look for something that’s specifically tailored to fit that niche. The IP practice of Thomas J. Germinario has been purposefully structured to fit seamlessly into any small-to-medium-sized general law practice and provide the functional equivalent of an in-house IP partner. The Germinario firm is looking for more than referrals from your firm — we are looking for a relationship in which we become an extension of your firm in IP matters, and you become our “go to” for matters within your practice areas.

What sort of practitioner should you be looking for in an IP outsource?

If your clients were huge multi-national corporations with massive patent portfolios, you’d have your own in-house IP department. Since you don’t, your clients are individuals and small-to-medium-sized businesses that have occasional IP involvement. So you want a practitioner whose approach to IP issues is geared to the needs of clients who are not major players in the IP arena. For such clients, cost and time are important factors. Big pharmaceutical companies are prepared to spend millions over decades in efforts to expand their patent claims to the marginal disadvantage of their competitors. The small inventor does not need, nor can they afford, this type of patent prosecution. They need their patent to issue quickly, at minimal cost, and give them basic protection against “knock-offs” and “work-arounds” of their product. The firm of Thomas J. Germinario has perfected a “streamlined” patent prosecution methodology specifically geared to the individuals and small-to-medium-sized businesses. Our methods lead to patent issuance is as little as six months. With other IP firms, your clients will see their patent applications become mired in a bewildering morass of procedural maneuvers which may extend patent prosecution over many years and transform their invention into a veritable “money pit”. Tragically, many small inventors are financially overwhelmed by this process and are forced to abandon their inventions before a patent issues.

Which IP credentials are most important to your clients?

In order to provide a full range of IP services, the practitioner should be licensed to practice before the U.S. Patent and Trademark Office. Experience in patent, trademark and copyright prosecution is also an important credential. Thomas J. Germinario is a licensed Patent Attorney (Reg. No. 52,939) who has been practicing IP law for over 20 years. He has extensive experience over that time period in patent prosecution as well as trademark and copyright registration. His patent prosecution experience encompasses varied inventions in the mechanical, electrical/electronic, chemical, medical, software and computer fields. Mr. Germinario is a licensed Professional Engineer who is able to provide inventors with legal guidance which is informed by his technical expertise. He is also an experienced litigator who can effectively enforce your clients’ IP rights and defend them against infringement actions.

How do you arrange for the firm of Thomas J. Germinario to become your firm’s IP outsource?

It’s as simple as picking up the phone or emailing Thomas J. Germinario using the contact information below. If you have a client in immediate need of IP services, a consultation can be arranged at your firm’s offices or ours. If a general discussion of future IP needs is more in order, an informal meeting can be arranged at your convenience.