Transfer Inquiry

The Transition Process: How We Make Switching IP Counsel Simple

Switching patent or IP counsel can feel like a significant decision—especially for growth-stage biotech and medical device companies with active portfolios, deadlines, and investor expectations.

In practice, the transition is straightforward and well-established. At Biotech Beach Law, we handle the process carefully to ensure continuity, preserve priority, and minimize disruption.

Our goal is to help you regain clarity and control over your IP strategy—without slowing your business down.

Why Transfer

Switching counsel is particularly common at the growth stage, when:

  • Patent costs begin to increase

  • Investors ask more detailed IP questions

  • Product direction becomes clearer

  • Early filings need refinement or coordination

At this point, clarity and strategy matter more than speed.

Our Process

We approach every transfer professionally and respectfully. Many companies have worked with capable prior counsel—their needs have simply evolved.

Our role is to help you move forward with:

  • Clear communication

  • Predictable planning

  • IP strategy aligned with your business

Step 1: Initial Strategy Review

The transition begins with a focused review of what you already have in place.

We typically:

  • Review existing patent applications and prosecution history

  • Understand your current products, pipeline, and roadmap

  • Identify upcoming deadlines and immediate risks

  • Discuss what prompted you to consider a change

This conversation is strategic—not transactional. It helps determine whether a transition makes sense now and what success should look like going forward.

Step 2: Evaluating Your Existing Portfolio

If we both decide it's a good fit, we take a closer look at your existing IP assets.

This includes:

  • Mapping claims to current and planned products

  • Identifying strengths, gaps, and misalignment

  • Assessing whether current prosecution supports long-term goals

  • Flagging opportunities to simplify or optimize going forward

For growth-stage companies, this step often provides clarity that was previously missing.

Step 3: Coordinating the Transition of Representation

Once the strategy is aligned, we coordinate the formal transition.

This typically involves:

  • Preparing and filing a change of attorney with the USPTO

  • Requesting files and records from prior counsel

  • Confirming upcoming deadlines and examiner status

  • Ensuring no loss of continuity or priority

Your patent rights and filing dates remain unchanged. The transition is procedural—not substantive.

Step 4: Taking Over Ongoing Prosecution

After the transition, we step in as counsel of record and manage ongoing prosecution.

We:

  • Review current examiner positions

  • Confirm or adjust prosecution strategy as appropriate

  • Handle office actions and interviews going forward

  • Keep you informed of options and tradeoffs

Our focus is on intentional decision-making, rather than reactive responses.

Step 5: Planning What Comes Next

Once immediate matters are under control, we look ahead.

For many growth-stage companies, this includes:

  • Deciding whether to continue, narrow, or expand existing filings

  • Planning future applications based on product direction

  • Aligning IP strategy with fundraising, partnerships, or regulatory milestones

  • Establishing clearer cost and timing expectations

This is often where companies experience the greatest value from the transition.

What Does Not Change When You Switch Counsel

Companies often worry about disruption.

In reality:

  • You do not lose your patent applications

  • Priority dates remain intact

  • Ongoing prosecution continues normally

  • There is no need to refile or start over

The only thing that changes is who is guiding strategy and execution.

If your company is considering a change in IP counsel, we’re happy to discuss whether a transition makes sense and how to handle it smoothly.

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