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Preparing to Meet An Intellectual Property Lawyer

Intellectual property (IP) attorneys can be indispensable partners in helping you solve problems relating to patents, trademarks, copyrights, and trade secrets. They can help to protect your rights, guard against infringement, and buy and sell valuable intellectual property.

If you have determined that you need to meet with a prospective attorney, make sure you prepare for your meeting, so as to make it as productive as possible and help you make sure this is the right attorney for you. What are the secrets to having an efficient and effective initial meeting?

Prior to the Meeting With the IP Lawyer

Much of the critical work happens before the in-person meeting. In your initial contacts with the law firm, whether directly with the attorney or with a receptionist or paralegal, provide a basic summary of your issue. No need to get too far into the weeds. The attorney will want to get oriented with a basic description of the type of concern that you or your business is facing.

For example, you might convey the following brief description to the law firm prior to the meeting: "I'm a children's book author, and have just learned that one of my most popular books is being copied for sale without my permission. It's being sold in two big stores downtown. I'd like to meet with Attorney Jones about what I should do." This description provides the law firm with the basics of the dispute, which involves copyright infringement and perhaps money damages against an infringing publisher and a couple of stores.

Sometimes, a law firm may try to speed along the information-gathering process by sending you a questionnaire to fill out in advance. If so, be sure to fill this out and return it before the meeting.

Also, be clear about the best ways to contact you (email, text message, cell phone, work phone, and so on) and the times you're available for either an in-person meeting or telephone call.

Finally, if there are documents you want the attorney to review prior to the meeting, which you believe are critically important to the dispute, consider send copies to the law firm beforehand. Admittedly, you might not know what paperwork will be "critically important" until you speak with your lawyer. But some items might be obvious.

For example, if you're presented with a sales contract from a buyer seeking to purchase your patent, and you want an attorney to review that document to advise you about any hidden traps, it's certainly appropriate to send it to prior to the meeting.

Attorneys tend to be busy people; do not send a lengthy document to the lawyer an hour beforehand. A week usually gives sufficient time.

Will a Conflict of Interest Prevent the Lawyer From Assisting You?

Before you get too far into any meeting or conversation, the lawyer is going to want to know about possible conflicts of interest. If you have a litigation matter, you should bring a list of other employees who may be witnesses, defendants or interested parties. If the lawyer or the lawyer's firm represents anyone on the other side of the fence, he or she will have a conflict and will likely not be able to represent you.

During the Meeting With the IP Lawyer

The attorney will likely take the lead in the conversation, but ask you plenty of questions. He or she may begin by asking about your personal and business background. Depending on the nature of your work and your legal problem, it may be helpful to bring samples of your work, such as images of your trademarks.

What else should you bring? Certainly a pen and paper, with which to take notes regarding any advice the attorney may give. Also bring any documents relating to the matter, whether or not you are certain that they're relevant.

Intellectual property lawyers will also often need to see any formal registration certificates that you have from either the U.S. Copyright Office or U.S. Patent and Trademark Office, since these often form the basis for your legal rights.

Lawyers will also want to see any relevant contracts, for example between you and your publisher or you and your employee, which govern intellectual property rights.

Spend some time thinking about what you may have on hand. Try to organize the documents in a logical manner before you meet with the lawyer.

If you're trying to secure intellectual property rights on a design, a work of art, a mark or whatever, bring a reproduction or a rendition to your meeting. This might include music, films, or other audiovisual materials that will need to be submitted along with your copyright application.

    The attorney will also want a good sense of the timeline of your matter, particularly if there is a dispute with another person or entity claiming ownership over your intellectual property. Thus, you should bring a calendar and any relevant correspondence that helps establish that timeline of usage.

    Asking Questions of the IP Lawyer During Your Meeting

    The meeting is not, of course, entirely about providing the attorney with information and documents. You will likely have many questions, which ideally you can prepare a list of beforehand. Some questions to consider asking are:

      • Have you handled cases like this before?
      • Approximately what percentage of your practice involves matters like this one?
      • What options do I have, and which option would you recommend?
      • What additional documents or information do you need in order to effectively represent me?
      • What problems do you foresee with my situation?
      • If I decide to retain you as my lawyer, what would you next steps be?
      • How long will it take to bring the matter to a conclusion?
      • How would you charge for your services, and approximately what fees would you anticipate?
      • Would you handle this matter personally or would it be given to some other lawyer in the firm? If other lawyers or staff may do some of the work, could I meet them?

      This is not an exhaustive list, of course, and your specific situation may yield additional questions. But by doing this level of preparation prior to your meeting, you can ensure a productive first session with your intellectual property attorney.

      From Lawyers  By Brian Farkas, Attorney

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