Who’s Minding the Store?

By now you surely understand the importance of paying close attention to your IP portfolio.  So the next question is, who in your company is doing it?  Many companies rely on outside counsel to prepare and prosecute their patent applications.  But you could be getting more out of the money you are spending for that time and effort.

The Status Quo

New product concepts flow from a combination of market research and scientific developments.  Scientists and engineers identify what they believe to be a discovery or invention, and they convey it to outside counsel.  The attorney files a patent application and, with each new discovery, another application may be generated.  Eventually the company has a pile of applications they refer to as a portfolio.  And, unless you have performed a Spring Cleaning, you still have the pile of pending applications.

Who’s In Charge?

Someone within your company needs to be paying attention to this assemblage of patents and applications.  Experience shows that this individual is usually someone who has many other significant responsibilities.  It may be the director of business development, the CSO, a lead scientist or engineer, or even the already over-worked general counsel.  Adding IP management to their role, when they are not necessarily trained in the field, serves to dilute their effectiveness in their already critical functions.  This is a weak solution to managing your portfolio.

Likewise on outside counsel to formulate, manage, and execute your IP strategy may not be the most effective approach.  Indeed, while outside counsel may certainly possess the ability to do it all, you likely do not have the budget to cover the expense.

Formulate, Manage, and Execute

The best solution is to have a full-time employee paying attention to the IP portfolio.  This individual would understand your business plan and the development program, and be trained in intellectual property in order to formulate, manage, and execute your IP plan.

Do you have to hire someone full-time?

These days, companies are adopting virtual business models.  They outsource as many of their core functions as possible to keep their employee and operating expenses at a minimum.  Pharmaceutical companies outsource research and development, pre-clinical, and clinical studies.  High tech companies outsource development and manufacturing.  Financial and marketing functions are outsourced as well.

Outsource IP?  Are you Kidding?

You already use outside counsel.  It’s a natural step to use consultants to assist in developing and executing your IP plan and coordinating with outside counsel. And, while it may seem as if hiring a consultant to assist with in-house matters will put a strain on your budget, it will actually decrease your overall costs by having dedicated expertise available to you when it is needed.  It will also relieve the added burden on employees who have other pressing responsibilities, thus increasing their efficiency.  Applying the approach discussed in Spring Cleaning will actually pay for the help you’ll need.

What are you waiting for?

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