I frequently get asked about what types of lawyers technology companies should be using, and to make referral recommendations when appropriate. Well, as you would expect from a lawyer, the answer is “it depends.” It depends upon the specific needs that arise.
For better or for worse, we live in an age of hyper specialization. Doctors specialize on isolated parts of bodies or certain bodily systems or conditions. With such hyper specialization, it’s possible to miss a symptom or cause that lies right before a doctor’s eyes. Unfortunately, lawyers are subject to the same malady.
Below I discuss certain areas of law uniquely applicable to issues that technology companies often face. Competent knowledge of multiple of these areas of law may be found to some extent in a single lawyer. More frequently though, especially in the larger law firms, each is found only in a single lawyer. Using a specialist has its advantages - and costs.
Patent Law: Patents protect inventions, processes and formulas. If you are dealing with evaluating or filing for a patent, you are going to need a patent lawyer. For the most part, patent lawyers just work with patent issues, which means evaluating patentability, filing/prosecuting patents, licensing and litigating patent infringement actions. Patent lawyers almost always also have advanced degrees in science or technology. Often patent lawyers will also, as a side business, do trademark filings. However, this is also a specialty area – that is often the realm of trademark-only lawyers.
Trademark Law: Trademarks protect names associated with products, services, and entities. A trademark lawyer will clear use of a trademark, assess trademarkability and file for trademark registrations. Trademark lawyers often limit their practices to trademarks.
Copyright Law: Copyrights protect the tangible expression of things like images, prose, software, photographs, music and videos. Copyright lawyers will pre-assess whether certain uses or creation of materials may infringe a third party’s copyright. However, a large portion of a copyright lawyer’s work involves copyright litigation actions. Filing of copyright registrations with the U.S. Copyright Office is a relatively simple process and does not usually require a lawyer’s time.
Trade Secret Law: Trade secrets are secret ideas that provide a competitive advantage to those who possess the ideas, like customer lists, formulas, processes, techniques, strategies, etc. There are things which can be protected as a trade secret or patent – and the possessor of such information will need to determine the best approach – because both protections cannot simultaneously apply to the same invention. Much work of lawyers in the trade secret area involves non-disclosure agreements and protections, often in the context of employment agreements and employee handbooks, and litigation.
Defamation Law: Defamation is publicly making a disparaging false statement about someone. A lawyer involved in defamation issues will usually be a litigator defending or initiating actions. However, such a lawyer can be called upon to pre-clear materials before publishing.
IP Litigation: IP litigators will often be multi-disciplinary handling patent, trademark and trade secret cases. These lawyers are a bit of an exception to the hyper specialization described above. However, they will still usually specialize in IP litigation.
Privacy Law: Privacy lawyers are often playing the role of compliance officers reviewing a company’s policies and procedures for compliance with applicable data and consumer protections laws. Many laws, both U.S. and international, may be involved when assessing privacy issues.
Commercial IP Law/Licensing: A lawyer managing commercial IP transactions will often be focusing on licensing, development, distribution, tech transfer and other agreements that deal with the commercialization of IP. These lawyers will often also work with SaaS and online businesses managing their document needs.
Advertising & Promotions Law: Advertising lawyers often review advertising programs for compliance with Federal Trade Commission regulations dealing with deceptive advertising, and methods of advertising such as telephone, text and email marketing. These lawyers will also often guide clients for compliance with contest, sweepstakes and promotions laws.
FDA Law: Issues dealing with development and commercialization of health-related technologies are very specialized and often handled by lawyers focused solely on this practice area.
Corporate Law: Corporate lawyers are the main exception to the above hyper specialization. These attorneys will handle all transactions from company creation to exit strategies for a wide variety of businesses, though they will utilize specialists as necessary.
Know your needs when selecting an attorney. One size does not necessarily fit all and so you may need to be using multiple attorneys in order to manage different issues.