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What to expect from an in-house intellectual property attorney

Today, technological innovation drives almost everything. Creation, protection and exploitation of new ideas are paramount for organizations to survive, whether the organization is driven by hardware, software or services. Particularly when new ideas are created, patent and trademark protection is conventional.

Organizations engaged in software must protect copyrights and trade secrets and tamper-proof marketed software by applying the Digital Millennium Copyright Act. One needs to be adept not only in protecting software, whether it is offered as a service or stored in the cloud, but also exploiting it for profit.

Innovation without protection and exploiting the fruits of innovation amounts to practicing philanthropy with any organization’s research and development investment. The investment strategy should find a sustainable competitive edge by focusing on the organization’s intellectual property paramountly. The value attributed to a company’s intellectual property far exceeds that company’s physical, employee and other assets and could be longer-lasting if properly used.

Key to this strategy is a well-rounded, experienced in-house intellectual property attorney to create a tailored intellectual property strategy and leverage it.

The attorney should engage with internal business leaders and product design and development teams, conduct intellectual property training such as unique “invention harvesting sessions” for engineers and document their ideas. Managing the submitted inventions, having them evaluated by in-house technical and business development experts and protecting patents by engaging external patent lawyers will follow.

When software is created, the in-house intellectual property attorney should establish an unobtrusive way to protect copyrights (including tamper-proofing marketed code by applying the Digital Millennium Copyright Act) and/or trade secret protection.

Develop a SUPER (select-use-protect-enforce-renew) methodology to protect distinctive styles and colors (also known as brands or trademarks) in which your product is marketed and messaging is communicated. Managing this virtuous cycle of intellectual property creation, protection and exploitation is imperative for the organization’s success.

Developing a global intellectual property portfolio for your organization comes next. Because not all technology and intellectual property can be created in-house, the in-house attorney should facilitate purchase or license of ancillary intellectual property. Companies should generate income by divesting of unneeded intellectual property as needed.

Managing relationship with U.S. and foreign outside counsels for worldwide patent prosecution and litigation should be second nature for the in-house intellectual property attorney. Quality patent filing and prosecution requires inscrutable attention to detail. Patents are often the most valuable asset.

The downside is patents are expensive to pursue and maintain. The attorney should design a tiered approach to patents by ascribing a value rating to the patent and linking the filing, prosecution and maintenance costs to the rating. By this approach, more high-quality patents are procured and maintained for longer. Second, the in-house attorney should furnish written guidelines to the outside prosecution counsels and administer them to temper their runaway billing costs.

In patent litigation, whether before federal courts or the International Trade Commission, the in-house attorney should actively engage with the litigators to review correspondence and legal arguments and can direct briefs in support of litigation. Minimizing exorbitant litigation expenses while always keeping the door open for level-headed settlements is crucial.

The in-house attorney should have a proven ability to license patents and technology to third parties. Patent licensing is an art requiring tenacity, patience, perseverance and courage. Precise reading of your organization’s validated patent claims on the infringing product is the needed proof. Engaging with infringers, sharing such proof and negotiating with persistence will eventually lead to an outbound license.

Similarly, unused technology developed by your organization is an asset that the in-house attorney should capitalize on to cultivate partnerships and/or generate income. This requires building a technology roadmap, establishing the nexus between your company’s technology and patents, finding a suitable partner who can commercialize it, negotiating and structuring a deal and facilitating the technology transfer.

The in-house professional should be proficient in applying legal analysis in third-party transactions and helping solve problems. The lawyer must judiciously balance risk and reward in transactions.

Establishing a framework for implementing intellectual property strategies with written policies, practices and guidelines is vital. Prepare such document repositories and systematically implement and administer them. Such written policies would lay a strong foundation for the intellectual property strategy and deliver consistent and sound results predicated on ethical intellectual property practice.

T. Rao Coca is an intellectual property consultant and licensing expert. He has been a senior executive in intellectual property at IBM and vice president of intellectual property at IGT. He holds both a doctorate and a juris doctor degree.

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