The Divided Interests Problem: Why Your Patent Attorney Serves Multiple Masters

Your patent attorney represents you. They also need to keep the inventor happy. They also need to run a profitable business. These interests conflict constantly, and you lose most of the conflicts without knowing they happened.¹

“The attorney/client relationship is not well understood by clients, and sadly, sometimes not well understood by attorneys. There is a lot of weirdness in the relationship, brought on by the conflict between fiduciary duties and the need for the attorney to run their own business.”²

The Three Masters

The company (the actual client). The attorney is legally obligated to act in the company’s best interest. The company pays the bills. The company owns the patents.³

“The attorney is an agent of the client and has a fiduciary duty to the client. This is because the attorney is often representing the client in their moment of greatest need. The agency relationship means that the attorney must do whatever the client wants. The fiduciary duty means that the attorney is responsible for doing the best job possible for the client.”⁴

The inventor (the gatekeeper). The attorney works directly with the inventor to understand and document the invention. The inventor is the day-to-day contact. If the inventor is unhappy, the attorney doesn’t get paid.⁵

The attorney’s own business. The attorney runs a business. They sell hours. They need revenue. They need clients who pay and refer other clients.⁶

When these interests align, everything works. When they conflict, something gives.

The Inventor vs. Company Problem

The attorney represents the company, but the inventor is the gatekeeper to payment and continued work.⁷

“The problem is that the inventors often demand certain things about the patent application that are not in the best interests of the client. Inventors are, by nature, a temperamental and fickle bunch, and they think they know best – about everything.”⁸

When an inventor demands something that’s bad for the company — adding unnecessary material, framing claims a certain way, including pet features that don’t matter commercially — the attorney faces a choice:⁹

Option A: Push back on the inventor. Risk the inventor complaining to the CEO. Risk losing the client.

Option B: Give the inventor what they want. Add the material. Keep the peace. The patent may be worse, but the relationship survives.

“Some inventors can get very prickly and demanding, especially when reviewing the patent application. This puts the patent attorney in a bind. The attorney needs to smooth over things with the inventor because the inventor is the gatekeeper to the attorney getting paid. However, the attorney is supposed to do the best thing for the company.”¹⁰

Most attorneys choose Option B. They give inventors what they want, then quietly adjust things after filing. The inventor feels respected. The company gets a compromised patent. The attorney keeps the client.

The Revenue vs. Quality Problem

Attorneys sell hours. Either explicitly through billable rates, or implicitly through fixed fees that assume certain time budgets.¹¹

Every hour spent on your patent is an hour not spent on other clients. Every invention the attorney talks you out of filing is revenue lost. Every additional round of revision is cost the attorney absorbs.

The incentive is always: do the minimum acceptable work, get the patent allowed, move on to the next client.¹²

Going deep on your business, understanding the competitive landscape, evaluating whether the patent is worth filing, pushing back on bad invention disclosures — all of this costs the attorney time and money without additional revenue.

The attorney’s business interest is to process patents efficiently. Your interest is to get valuable patents. Those aren’t the same thing.

Why Attorneys Can’t Give Business Advice

Patent attorneys are structurally the wrong role for strategic advice. They are paid to draft and prosecute — not to decide what’s valuable.³³

“Patent attorneys are not hired to decide what is valuable. They are hired to draft. They are workmen hired to do a single job. Just like a house painter does not decide what color your house should be, a patent attorney does not decide what should be protected.”³⁴

A patent attorney will never tell you:³⁵

• Whether the claims are commercially meaningful
• Whether infringement is detectable
• Whether enforcement would be realistic
• Or whether the patent would actually pressure a competitor

Not because they’re hiding anything — but because that judgment is not theirs to make. They execute instructions. The hardest parts of patent value lie upstream of drafting.³⁶

“In the end, you are hiring a workman to do a job, not a ‘counselor’ who will help you build a valuable business asset.”³⁷

The Certainty Problem

Good advice often involves uncertainty. “This might not be worth patenting.” “This claim amendment might hurt enforceability.” “This detection strategy might not work.”¹³

Attorneys hate giving uncertain advice. Uncertainty creates liability exposure. If they’re wrong, they get sued.¹⁴

“The fiduciary duty means the client can sue the attorney if the attorney does not act in the client’s best interest at all times. The attorney carries malpractice insurance just for this occasion.”¹⁵

The safe path: present all the options, let the client decide, document the decision. Now the attorney is protected regardless of outcome.

“They’ll say: ‘Here are twelve ways you can handle this. Each has pros and cons. You decide.’ That feels like professional advice. It’s not. It’s a legal CYA move. By presenting every option, they’re not committing to anything. They’re avoiding responsibility.”³⁸

This leaves you — the CEO who isn’t a patent expert — making decisions you’re not qualified to make, based on information that isn’t complete, because your attorney won’t synthesize it into a recommendation.¹⁶

The Walking Malpractice Suit

Inside patent law, small inventors are known as “walking malpractice suits.”¹⁷

“Inside the business of patent law, small inventors are known as ‘walking malpractice suits.’ Patent attorneys are taught to never give business advice. Instead, they merely explain all the options and make the client choose. Then the attorney is not on the hook.”¹⁸

“An attorney’s fiduciary duty prevents giving meaningful business advice.”¹⁹

The liability math is wildly asymmetric:³⁹

Tell someone not to patent something, and if you’re wrong, you’re liable for all the profits they would have made for 20 years worldwide.²⁰

Tell someone to patent something worthless, and your exposure is approximately $56,000 — the cost of the patent — which insurance covers.²¹

“If they say ‘get a patent’ and they are wrong, their exposure is the cost of a patent, maybe $30,000. If they say ‘do NOT get a patent’ and they are wrong, their exposure is all your lost profits – in every country of the world – for the next 20 years.”⁴⁰

“But consider the alternative: if the patent attorney says ‘get a patent’ and they are wrong because the patent never issues, the attorney might be on the hook for $56,000, the approximate cost of a patent. Their malpractice insurance will cover this exposure, but mostly the attorney will point to the examiner or some other factor as to why the patent never issued.”²²

The rational response: always recommend patenting. Never recommend against it. Let the client decide, with full documentation that the decision was theirs.

Your attorney isn’t protecting you. They’re protecting themselves from you.

Case Study: The Byrne Malpractice Lawsuit

The case of Steven Byrne illustrates the limits of attorney responsibility.⁴¹

Byrne invented a string trimmer accessory and hired a patent attorney. During prosecution, the attorney added claim limitations to satisfy the examiner — narrowing the claims significantly. Black & Decker looked at the patent, identified an easy design-around, and declined to license. Then they brought a similar product to market.⁴²

Byrne sued Black & Decker for infringement. He lost — the claims were too narrow. He then sued his patent attorney for malpractice, believing the attorney let him down by allowing the claims to be weakened.⁴³

He lost that lawsuit too.

“The court said that the patent attorney’s duty of care was only to get a patent, not to get a good one. The attorney cannot be held responsible if the patent turns out to be worthless – that is the client’s responsibility.”⁴⁴

The lesson: your attorney’s job is to get a patent. Whether it’s valuable is your problem.

How This Manifests

Inventors get pacified at the company’s expense. The attorney adds whatever the inventor wants rather than fight about what’s good for the business.²³

Patents get filed that shouldn’t. The attorney won’t tell you an invention is bad because the downside risk of being wrong is too high.²⁴

Claim amendments happen without business analysis. The attorney solves their problem (overcoming rejections) without evaluating whether the solution creates your problem (unenforceable claims).²⁵

Nobody synthesizes information into recommendations. You get options and factors, not advice. You decide without expertise.²⁶

“When your patent ends up being worthless, the law firm shrugs. ‘You made the decision. We just presented the options.’”⁴⁵

The long-term value is sacrificed for short-term peace. Everyone stays comfortable. The patent portfolio slowly fills with worthless assets.²⁷

What You Can Do

Understand the dynamics. Your attorney’s interests diverge from yours. That’s not malice — it’s structure. Knowing it lets you compensate.²⁸

Separate inventor management from patent strategy. Don’t let the attorney’s need to keep inventors happy drive patent decisions. Have business people review patent strategy independent of inventor input.²⁹

Ask for recommendations, not just options. Force the attorney to synthesize. “Given everything you know, what would you do?” They may refuse to answer. The refusal is informative.³⁰

Get second opinions. A different attorney evaluating the same facts may give different answers. The variance tells you something about how much uncertainty exists.³¹

Accept that you’re the strategist. The attorney can’t or won’t do strategic thinking on your behalf. That’s your job. Build the capability internally or hire someone other than your prosecution attorney to do it.³²

“Hiring a patent attorney does not absolve you of the need to understand whether your patents are useful. If you don’t know how to evaluate claims at a high level, you don’t know whether you’re protected.”⁴⁶

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Related

• Why patent attorneys can’t give you business advice
• How do I tell if my patent attorney did a bad job?
• Why Patent Competence Is a CEO’s Responsibility — Strategy doesn’t come from your patent attorney
• Your Patent Attorney Is NOT Giving Business Advice — The malpractice liability that prevents real advice
• Independent Inventors are a Walking Malpractice Suit — Why attorneys avoid giving meaningful counsel
• Problems Caused by the Attorney/Client Relationship — The structural conflicts in the relationship
• You – And Only You – Are Responsible for Your Patent — A case study in attorney limitations
• Patent Attorneys Do Not Live with Their Mistakes — Why feedback loops don’t exist
• Investing in Patents — Section 4-6 details the attorney-client relationship