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Most patent attorneys are hired to get patents. David Hyams thinks that's the wrong starting point.
As Co-Founder and CBDO of Longship Legal, Hyams builds around a single conviction: that IP only creates real business value when it's connected to what a company is actually trying to win.
In a recent episode of IP Innovators, he laid out the questions he says should come before any claim is drafted, and why most attorneys never think to ask them.
1. What Is Your Business Actually Worth?
Longship Legal was born from a question Hyams and his co-founder Tim Johnson couldn't stop asking themselves while doing patent prep and prosecution at a previous firm.
"We were getting patents for clients. But we couldn't really connect the dots between the amount of effort that they were putting in…and the actual bottom line value to the companies that we were serving."
That disconnect led them to rebuild their client intake from scratch. Now, before any IP conversation, the first questions are about the business itself. As Hyams puts it, "We have to start with: ‘Tell me about your business. What is your product or service? How do you deliver that to your customers? How does your business make money?’"
These aren't warmup questions. They're the foundation of everything that follows.
2. What Are Your Key Intangible Assets?
Once the business model is clear, Hyams moves to what he describes as the real work: identifying the specific intangible assets that are worth protecting.
"Intellectual property is really a set of legal tools, and that's kind of all they are, to capture the value of intangible assets that technology companies are creating all the time."
The distinction between intangible assets and IP tools is central to how Longship operates. Most firms conflate them. Hyams separates them deliberately, because until you know what you're protecting and why, you can't make a sound recommendation about how.
The goal isn't to catalog everything. It's to identify "the key intangible assets…that are aligned with the business goals that essentially enable the business to make money, that provide them with the opportunity to win in the marketplace."
3. How Could This Asset Be Protected?
The instinct in patent practice is to reach straight for the patent application. Hyams pushes back on that because the right tool depends entirely on the asset, and the options are broader than most clients realize.
"A software process may have patentable aspects, it may have copyrightable aspects, it may have aspects that are beneficial to the business to hold back as a trade secret."
He also points to a category most patent attorneys overlook entirely: contracts. Contractual relationships, the terms governing how employees build the product, how customers use it, how data is accessed, "are also potential intangible assets of the company." IP, he notes, "cuts across traditional silos within a business…you can have intellectual property implications in contracts, in employment agreements, certainly in licensing agreements, customer agreements."
The matrix of options only becomes visible if you ask the question before defaulting to prosecution.
4. Does Patentability Actually Matter Right Now?
A standard move in patent practice is to flag a 35 USC §101 issue and shut down the conversation. Hyams takes a different view: patentability questions belong later in the analysis, not at the front of it.
"Those [§101] considerations wouldn't affect the business or the technical analysis of identifying key intangible assets."
He describes the difference as a matter of lens. The traditional approach is "a narrower lens. Sometimes that's what a client is looking for." But for the early-stage technology companies Longship works with, leading with patentability often means walking away from protection that exists, just in a different form. "We're looking at ultimate value to the enterprise rather than acquiring patent documents."
Identifying a potential eligibility issue isn't the end of the conversation. It's one input into a broader strategic recommendation.
5. If AI Drafts This, What Still Has to Come From You?
Hyams is direct about what AI tools have and haven't changed in legal practice. On the upside, he acknowledges that "the real promise of AI to eliminate certain sorts of drudgery from our work has actually come true, at least in our practice. We're able to generate documents much more quickly than we ever were before."
But speed only matters if the inputs are right. "If the [underlying business deal] hasn't been thought through and carefully negotiated by both sides…that's nothing that AI can cure."
He also draws a sharp distinction between generic AI and proprietary legal AI tools trained on restricted datasets. After testing both side-by-side, he found that a generic LLM produced a contract that "sure looked like a contract. And if the parties had signed it…it would have been enforceable."
But enforceable isn't the same as sound. The generic tool missed jurisdiction-specific issues entirely, and neither party would have known.
The proprietary tool, by contrast, flagged jurisdiction-specific enforceability issues, cited the relevant case law, and explained what needed to change. "The kind of information we absolutely have to have."
The conclusion: "I use general AI tools with great caution."
The Jobs That Were Never at Risk
Patent attorneys worried about AI taking their jobs are asking the wrong question. The real question, the one Hyams has built an entire firm around, is whether they're providing the kind of value that AI was never going to provide in the first place.
"If your job was built entirely around typing," he says. "Then yes, you're in trouble."
The rest of it? That's still yours.
FAQ: IP Strategy for Patent Attorneys
What Is IP Strategy and Why Does It Matter for Patent Attorneys?
IP strategy is the process of aligning a company's intellectual property decisions with its broader business goals. For patent attorneys, it means going beyond patentability analysis to understand which intangible assets are worth protecting, why, and through which legal mechanisms. Without it, companies risk spending significant resources on patents that don't capture what actually makes them valuable.
What Should Patent Attorneys Ask Clients Before Drafting a Patent Application?
Before touching a claim, patent attorneys should understand the client's business model, revenue drivers, competitive advantages, and key intangible assets. The goal is to identify what the business is actually trying to protect—and whether a patent is the right tool to do it—before any drafting begins.
What Are Intangible Assets in IP Law?
Intangible assets are the non-physical elements that create value for a business: proprietary processes, software, data, brand, and know-how, among others. Not all intangible assets are best protected by patents. Depending on the asset, trade secrets, copyright, trademarks, or contractual structures may offer stronger or more appropriate protection.
How Is IP Strategy Different From Patent Prosecution?
Patent prosecution is the process of obtaining a granted patent from a patent office. IP strategy is the broader framework that determines whether pursuing a patent is the right move in the first place, and how it fits alongside other forms of protection. Conflating the two often leads to patents that are legally valid but commercially disconnected from the business they're meant to serve.
When Should Patentability Be Evaluated in the IP Strategy Process?
Patentability analysis—including §101 eligibility—should come after the intangible asset analysis, not before it. Leading with patentability can prematurely close off protection options that exist through other legal mechanisms. A potential eligibility issue is one input into a broader strategic recommendation, not a reason to end the conversation.
Can AI Replace Patent Attorneys in IP Strategy Work?
No. AI tools can accelerate document generation, surface prior art, and automate repetitive tasks. But they cannot identify a company's key differentiators, understand its competitive vision, or exercise the judgment required to turn a business analysis into a sound IP recommendation. The strategic work that determines whether IP creates real business value remains firmly in the hands of the attorney.
What Is the Difference Between General AI Tools and Proprietary Legal AI Tools?
General-purpose large language models are trained on publicly available data and lack access to the restricted datasets that govern legal practice—case law, jurisdiction-specific enforceability rules, practice guides, and internal firm knowledge. Proprietary legal AI tools are built on those datasets, making them significantly more accurate for high-stakes legal work. For patent attorneys evaluating AI tools, that distinction is the one that matters most.
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