IP Expert Hiring Checklist

Identify the type of IP you need to protect (trademark, patent, copyright, trade secret)

Each has fundamentally different processes, timelines, and cost structures.

List all assets that may require protection (brand name, logo, software, invention, content)

Many founders don't realize the full scope of what needs protection until it's too late.

Check if any IP may already be registered or infringing by searching USPTO.gov

A basic clearance search before filing saves significant legal fees.

Identify your business expansion plans (markets, products, international)

IP protection strategy should align with your business trajectory.

Determine your budget for IP protection across 1–3 years

IP protection is an ongoing cost — patents require maintenance fees, trademarks require renewals.

Confirm bar membership and USPTO registration (required for patent prosecution)

Patent attorneys must be registered with the USPTO — not all attorneys are.

Ask about experience in your industry (software patents require different expertise than mechanical)

Patent claims in software vs. biotech vs. mechanical require domain-specific expertise.

Ask about their office action response rate and prosecution track record

Initial applications are often rejected — office action handling skill is what separates good IP attorneys.

Clarify whether they handle enforcement in addition to prosecution

If you face infringement, you want an attorney who can both build and defend a portfolio.

Ask about international IP experience if you plan to operate globally

International IP requires country-specific filing strategies and local counsel relationships.

Request a written IP strategy memo covering what to file, when, and why

Strategic documentation prevents piecemeal protection with gaps.

Ensure all IP assignments from founders and contractors are executed early

IP ownership must be formally assigned — verbal agreements don't hold.

Set calendar reminders for all filing deadlines and maintenance fees

Missed deadlines in IP law can permanently forfeit protection rights.

Ask for plain-language claim summaries after each filing

You should understand what your IP actually covers.

Document all trade secrets with an internal confidentiality program

Trade secrets lose protection without active confidentiality measures.

Request a complete IP portfolio register (all filings, status, key dates)

An IP register is essential for investor due diligence and future acquisitions.

Ensure all originals of assignments and licenses are securely stored

Chain of title must be provable for IP to be transferable or licensable.

Confirm IP ownership is properly reflected in corporate documents

IP owned by founders personally rather than the company creates serious due diligence problems.

Identify IP gaps that were not addressed in this engagement

Future advisors and investors will find these — know them before they do.