IP Management Basics for In-House Counsel

Intellectual Property(IP) encompasses important intangible assets of a company, including patents, trademarks, trade secrets, and confidential information, and has become increasingly valuable.

In-house counsel whotraditionally focused oncorporate lawmay only have a basic understanding of IP.  However, to successfully manage IP in a high growth company,in-house counsel need a combination of skills, includingimplementing processes and communicating with stakeholdersto drive efficiency and alignment across a company.

Portfolio Review and Tracking

Establishing a process and owners for tracking IP is an important step to successful intellectual property management.  This includesdocumenting law firms who manage IP for the company, identifying the appropriate technical and business team to assist with patent and trademark prosecution, and if needed, conducting an IP audit.  For entities that have undergone transactions, internal records may be incomplete and it can be necessary to audit internal records and public databases such as the U.S. Patent and Trademark Office or the World Intellectual Property Organization (WIPO) for IP owned by predecessor entities.  Outside counsel should provide periodic docket reports listing upcoming deadlines in the next month and 6 months so that the company can manage workflow.  Depending on the breadth and complexity of the portfolio, pending and granted cases can be tracked on a spreadsheet or using software.The same approach can be applied to document information that qualifies as a trade secret. 

Obtaining Internal Alignment and Training on IP

The most successful in-house IP counselconsistently communicate with the business on the strategy for maintaining, expanding, and monetizing the portfolio.  Depending on the importance of IP to the company, this may include standing or ad hoc meetings with the R&D teams to discuss active projects likely to produce new inventions, with marketing to discuss strategy for branding and new product releases, and a training plan and/or self-help guides for employees around relevant topics like invention disclosures and appropriate NDA use.

In-house counsel are best positioned to establish processes and communication because they have auniquely broad view of the business and knowledge of internal stakeholderscompared to outside counsel.

Managing Maintenance Fee Payments

Properly managing patent and trademark maintenance fees is one of the most important aspects of IP strategy since failure to pay fees on time can result in irreversible loss of IP rights.  These fees are due periodically for patents and trademarks based on country of issuance.  While it was once common for U.S. law firms to maintain responsibility for paying these fees, in recent years it has been more common for companies to manage and pay annuities in-house via a third-party vendor.  For inexperienced in-house counsel or paralegals, it can be easy to miss key steps for ensuring that the vendor is appropriately instructed and cases are paid on a timely basis.

Conclusion

Investing time and resources to effectively manage IP is an important differentiator for in-house counsel who look to drive operational efficiencies and createimpact a company’s valuation and overallsuccess.