Picture a creative Ph.D-type in the bio-medical world. In the spirit of IPKats everywhere, we will call him Felix. Through dint of Felix's creativity, perseverance and self-funding (most of Felix's personal inheritance being applied to pursue his dream), Felix has achieved some highly promising lab results. Despite his research Ph.D., the goal of Felix is not the furtherance of science per se but the possible application of his results to product development and ultimately to commercialization.
In the first step to reach the nirvana of product development and commercialization, Felix turns to a patent attorney with particular expertise in the area of Felix's research. Several related patent applications follow. Less than 18 months from first filing have passed, but Felix is already thinking about how to secure funding for the next developmental stage of his project. Not one to settle for only short-term goals, Felix also wishes to develop a longer-term plan of for the ultimate commercialization of his inventions. To achieve both these shorter and longer-term goals, Felix engages a specialist in grant-writing, a general-practice commercial/corporate lawyer and a business consultant.
Felix now finds himself in a bit of a personal quandary. He feels most comfortable when in the company of his patent attorney. But Felix knows that staying solely within the comfort zone of his patent attorney will not propel him to the next stage. Indeed, while Felix's immediate goal is to attract funding to conduct further research, his business consultant is busily preparing a business plan.
Felix, however, has also sought out the view of his IP/patent counsel regarding the best way to approach commercialization. It turns out, however, that counsel's view, based on his understanding of the invention and the scope of the patent applications, is very different from that of the consultant. Felix returns to his consultant and summarizes for him counsel's view on commercialization. The consultant is soon to respond. He advises counsel that he has no patience for lawyers and that the business plan will proceed apace with no further interference from counsel. Felix, from his perspective, has stretched his current budget to the point of zero slack.
While he is not privy to the business plan, counsel is reasonably certain that it is not in compatible with the current state of Felix's patent position. On the other hand, since the consultant declared counsel persona non grata, Felix has not been in contact with counsel. Should counsel simply proceed with patent prosecution and refrain from any foray into the commercial side of Felix's activities? Or should counsel initiate a communication with Felix, reiterating counsel's view about the preferred direction for commercialization? Or should counsel contact Felix and offer a revised patent strategy, if required, provided that Felix shares the business plan with counsel? If the latter, how should counsel address the issue of costs for the revised patent strategy?
What is counsel to do?