Without legally protected intellectual property rights, a company is exposed to rampant piracy of its most basic investments in its name and brands, technological innovations, software developments, and contractual licensing and relationships.

Under the guidance and control of the business and IP strategy, legal counsel operates to identify potentially protectible rights, to acquire those rights through the legal protections afforded by law, and, if necessary, to enforce such rights against violators.

In-House Legal Counsel Functions

Many companies lacking an internal IP function encounter a need for IP legal counsel concerning:

• Identification of protectible inventions, trademarks, copyrightable works or other intellectual properties
• Filing and prosecution of applications for government grants
• Dispute analysis, including avoidance of conflicts with IP rights of others
• Enforcement of IP rights, including litigation if absolutely necessary
• Licensing agreements and other transactions involving the exploitation of IP rights.

The challenges which small and midsize companies face in securing these services typically center on a lack of resources. If the company cannot afford full-time in-house IP counsel, then the work must be outsourced. Necessarily some function or functions within the company must coordinate with outside counsel.

Often this is the General Counsel or other corporate counsel, which typically lack technical and IP legal experience. Or the burden may fall upon a technically trained administrator lacking legal training and experience who is often placed in the difficult position of having to perform quasi-legal tasks and make quasi-legal decisions.

Technical and IP Experience Needed

The corporate counsel or administrator will have to struggle with such questions as:

1. Which innovations, or trademarks, or software should be outsourced for preparation of application for government protection?
2. What guidance and parameters and specifications should be imposed upon outside counsel in connection with the task assigned?
3. Is the work being performed by outside counsel competent?
4. Which IP issues or potential conflicts merit outside counsel review or opinions?

Other non-legal issues arise which are also vexing to a non-legally training administrator:

1. Which of the many outsource candidates should be used?
2. Are the fees being charged for IP legal work fair and reasonable considering the market demand for such services, comparable rates, and the quality and timeliness of the work performed?

In truth, someone with IP legal training and experience is best able to coordinate the outsourcing of IP legal work. A skilled practitioner will know which law firm is best suited to provide the work needed, to judge the quality of the work performed, and to know whether the company is being overcharged for the work provided.

For one client I negotiated a fixed-fee-per-application arrangement with outside patent prosecution counsel which has saved the client hundreds of thousands of dollars while improving patent quality.

The survival IP issues which arise in technology and other IP-rich companies are too great a burden to impose upon non-IP-trained professionals or staff. Only competent full or part-time internal IP counsel is able to fulfill the critical IP legal functions in such companies.

An on-site IP counsel often becomes a vital part of the management team, advising on IP strategy and management, dispute issues and other IP matters of concern to the front office.

A Stitch in Time Can Save Nine

In my experience, an acting in-house IP counsel available on a regular basis can quickly advise on courses of action which will prevent dozens of small problems from becoming major expense headaches. These matters include incoming and outgoing confidentiality issues, HR debriefings of departing personnel, designing around competitors’ products or services, questions of trademark usage, copyright registrability, basic questions of patentability, and many others.