3 Questions For Advocates For Women Inventors (Part II)

// This week, I continue my written interview series on advocates for women inventors. For this installment, we will hear from a practicing patent attorney, with deep experience in representing clients seeking IP protection for their innovations. Let’s jump right in and meet our interviewee, Carolyn Favorito, in her own words:

For the past 27 years, Carolyn Favorito has obtained intellectual property (patents and trademarks) and provided related intellectual property business strategies for clients in the chemistry and life sciences fields, among others.

Carolyn authored the chapter “Intellectual Property 101 for Female Inventors” in the well-received “Secrets of Successful Women Inventors” (Square One Publishers, 2023). She has obtained intellectual property for an inventor, Lisa Lane of Lane Innovations, also featured in this book. Carolyn Favorito has been the managing partner of Favorito Law LLP since 2011 and can be reached through her website www.favoritolaw.com or directly at [email protected].

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Now to my interview with Carolyn. As usual, I have added some brief commentary to Carolyn’s answers below but have otherwise presented her answers to my questions as she provided them.

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Gaston Kroub: How can practicing patent lawyers help female inventors on a pro bono basis?

Carolyn Favorito: Unfortunately, female inventors, who account for only about 13% of U.S. patent holders, historically have less access to funding, and thus may lack sufficient capital to afford experienced intellectual property counsel when starting up their businesses. Many undercapitalized inventors fall victim to providers of bargain basement priced patent legal assistance, who provide inventors with only weak patent protection.

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Fortunately, the United States Patent and Trademark Office (USPTO) recently launched the Patent Pro Bono Program, where inventors who satisfy a certain lower-income threshold (three times the poverty level) and other criteria can apply online in their region for pro bono legal assistance. This nationwide network of independently operated regional programs match qualified inventors with volunteer patent attorneys and agents, which is a fantastic resource for undercapitalized female inventors.

Patent attorneys, who are looking to satisfy their pro bono hour requirement, may find volunteering for the USPTO Patent Pro Bono Program the perfect opportunity to use their esoteric knowledge to help women in need.

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Otherwise, it may be difficult to find patent lawyers who will represent female inventors on a purely pro bono basis because practicing patent law is complicated, time-consuming and fraught with risk. But all may not be lost.

GK: Carolyn is, of course, correct that securing pro bono representation for an involved legal matter like filing a patent application is a tough ask. And she gives some good advice for what might help get that ask answered in a positive way. At the same time, there are always opportunities for practicing IP lawyers to help prospective patent filers with an initial consultation and good referrals. Another way to help is by volunteering time toward a presentation for a local women’s business support group or similar organization as a way of making the unfamiliar IP system a little less mysterious for prospective inventors and brand owners.

GK: How can female inventors get access to cost-effective patent representation?

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CF: Female inventors who are unable to use the USPTO Patent Pro Bono Program may find their limited capital burning up quickly with startup expenses yet still want access to experienced patent counsel. In this case, inventors might consider offering profit sharing or percent ownership of their companies to patent attorneys. Some firms may provide legal services in exchange for profit sharing or ownership, though many do not due to the overwhelming number of patents that are never commercialized. I recommend inventors, therefore, pitch attorneys by showing a clear path to commercialization so the patent attorneys can weigh the risks and benefits. It can be a win-win for both the inventor and attorney. Currently, I have profit-sharing agreements with three female clients (inventors), which have given them a leg up compared to their often better-funded male cohorts.

GK: It is great to hear that there are experienced and entrepreneurial patent lawyers like Carolyn thinking of ways to make the daunting cost of securing IP protection more manageable for female clients. When that can happen in a win-win situation such as the one described by Carolyn, all the better.

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GK: What is the most important thing you have learned about the patent market based on your work in the field so far?

CF: The most important thing I have learned about the patent market is that patents should not be considered in a vacuum. A company’s patent(s) may be the company’s only tangible asset. The importance of developing a patent strategy early on may avoid costly mistakes and increase the value of the overall patent portfolio. Female inventors might have less capital than men, so spending money on obtaining a patent(s) and considering strategies to maximize the inventions’ commercial potential is money well spent.

Merely getting a patent that covers an invention may be insufficient to maximize the commercial potential of the invention. More seasoned patent attorneys may be better equipped to align a patent strategy with a company’s tightly intertwined business objectives forming the basis of a successful company. For example, the inventor, with the help of the patent attorney, should put themselves in the shoes of a potential infringer when drafting patent applications to include disclosure that can be used to stave off potential competition down the road. Thus, in addition to obtaining a patent that covers the invention, the patent also may potentially cover a competitor’s later invention.

Further, a seasoned patent attorney can better navigate whether the company can sell its invention without infringing another inventor’s patent. Also, for example, if a company changes direction and begins selling a different product, a patent attorney should make sure the patent is amended or a new patent is filed to cover the new product and otherwise align the patent strategy with a company’s continuously changing business goals.

GK: Here again, we have sage advice from Carolyn regarding the value of experienced IP counsel — value that is magnified when the client is understandably less sophisticated about the workings of the IP marketplace. Put another way, the less savvy an inventor is about IP, the more benefit they should see from working with experienced IP counsel. That is especially true for clients when their IP counsel is sensitive to cost concerns that their financial situation may impose, but still manages to propose legal and business solutions that maximize the impact of the client’s IP at a price the client can afford.

My thanks to Carolyn for the insights. I wish her and Edie the best of luck with their book, which will hopefully inspire more women to innovate and seek IP protection for their innovations.  I am always open to conducting interviews of this type with other IP thought leaders, so feel free to reach out if you have a compelling perspective to offer.

Please feel free to send comments or questions to me at [email protected] or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at [email protected] or follow him on Twitter: @gkroub.

Topics

Carolyn Favorito, Gaston Kroub, Intellectual Property, Inventors, Women's Issues