Patent prep and prosecution more commodity than patent strategy

Mary Doyle, general counsel of Palm, interviewed in Law.com In-House Counsel , May 18, 2006, says that “it is very important for in-house legal departments to develop specific expertise, not so much at the patent prosecution level, but at the patent strategy level.”

This comment puts preparation of patents second to patent strategy. The former is somewhat mechanical, often subject these days to fixed-price arrangements, and frequently entrusted to patent agents. The latter – strategic thinking – is big brain work, worthy of top-flight IP lawyers. Or so this quotation suggests.