What is IP Strategy?

I have yet to find a generally accepted definition of IP strategy but the US blogger Jackie Hutter offers an excellent definition of IP strategist in her article “What is an IP Strategist?”

“IP Strategists are a new type of Intellectual Property advisor.  We combine business acumen with IP knowledge to provide business-focused advice.  An IP Strategist does not advise you to spend your money on obtaining IP because you can, but because you need to.  That is, an invention may be legally entitled to a patent, but if that patent does not protect a product or technology that your company is selling currently or planning to sell in the future, obtaining a patent is a waste of your company’s valuable resources.  To ensure that you do not waste money on IP rights that do not align with your goals, an IP Strategist works with you to ensure that you only get IP that supports and maximizes your business value.  In other words, an IP Strategist first listens to you to determine what your business goals are and how you wish to achieve them and only then will the IP Strategist suggest that you move forward with obtaining cost appropriate IP protection.”

That passage and in particular the last sentence suggests that IP strategy means obtaining optimum legal protection of an intellectual asset to achieve a business objective.   For the purpose of this definition “an intellectual asset” means a brand, design, technology or work of art or literature. It is stressed that optimum means best: not the most extensive and certainly the most expensive – but the most appropriate legal protection for a business name or logo, a new product design, a new invention, a film, painting or live performance.  In this context it must be stressed that many assets may be protected in more than one way. An inventor can patent his or her invention but equally he or she can keep it under wraps and rely on the law of confidence to prevent unauthorized use or disclosure.  Trade secrecy can last much longer and be much more effective than a patent. The recipe for Coke has been kept secret for well over a century and that for Chartreuse considerably longer. Similarly, a trader can apply to register a trade mark or he or she can rely on the law of passing off.  The choice of legal protection will depend on a number of factors such as the nature of the asset, the manner in which it is to be exploited, the countries in which it is to be sold, the shelf life of the competitive advantage and so on.  Patenting in all the major markets of the world may be the optimum legal protection for a pharmaceutical product that has taken years and cost millions to develop. Unregistered Community design may be sufficient for a fashion item or novelty that will be in demand for a season or even less.

IP strategy goes far beyond choosing the optimum legal protection for an intellectual asset since business objectives can be furthered by licensing, collaboration and enforcement. It is significant that the publication Intellectual Asset Management, which lists those it believes to be “The World’s Leading IP strategists”, divides its list into the following sectors of expertise: brokering, defensive patent aggregation, finance, intellectual asset and intellectual capital management, IP auctions, IP insurance, IP management consultancy, IP-backed lending, legal, licensing, M&A, tax, technology transfer and valuation. The “legal” sector for instance includes litigation and litigation support as well as infringement evidence collection, patent and trade mark prosecution; expert witness services, IP audits, due diligence, arbitration and insolvency.   The British names on AIM’s list include patent agents like Matthew Dixon of Harrison Goddard Foote and solicitors such as Ben Goodger of Rouse Legal.

Where does a client go for intellectual property strategy? Possibly but not necessarily his patent or trade mark attorney. I say “possibly” because not all patent or trade mark agents see intellectual property strategy as part of their job though many do.  When I posted “In Defence of Patent Agents” on 30 Oct 2010 I received the following very thoughtful response from a Mr. George Pappas a US patent attorney practising in Greece:

“As a US trained patent lawyer of 20 plus years now practicing in Europe, I cannot disagree more that a distinction can be drawn between a patent prosecutor and a patent strategist. A patent expert is “a patent strategist” inherently. ……………. It is the job of the skilled patent attorney to figure out what the invention is based on information asked and provided by the inventor, and where possible knowledge of the prior art. This requires, at a bare minimum, broad and sufficient understanding of (i) the client’s technology, (ii) competitive landscape, (iii) deep understanding of patent law as it applies to the “invention” as claimed, (iv) a deep understanding of what the client aims to accomplish with a particular patent or set of patents, (v) a deeper understanding of litigation strategies and enforceability of patents generally in various jurisdictions around the world; and (vi) most importantly, a client’s budget constraints in the short term, and its exit strategy in the long term.”

Another patent attorney who appears to be an IP strategist is Don Lawrie of Lawrie Intellectual Property of Glasgow:

“We want to know about your business. Only then can we advise you how best to protect your intellectual property. We can work with you in a traditional client-attorney relationship, or we can act as in-house counsel for a specified number of days per month. Tell us what you want, and we’ll meet your requirements.”

But there are other advisers and possibly one of the best sources of advice on IP strategy is the patent bar. Barristers are consulted by patent attorneys on difficult points of law that arise during patent or trade mark prosecution and we are briefed by attorneys in hearings before the Comptroller and appeals to the court.  The judges of the Patents Court and Patents County Court are drawn from our numbers as are the judges of the Chancery Division and Chancery County Courts. We are consulted on licensing and other contractual issues and, of course, infringement proceedings. As we do not apply for patents, trade marks or registered designs we can give completely disinterested advice on the optimum intellectual property package. My article on “Advice and Drafting” helps explain why counsels’ opinions are so highly regarded.

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About Jane Lambert

I am a barrister specializing in intellectual property, technology, media and entertainment and competition law. I specialize in helping SME (small and medium enterprises) protect and exploit their investment in brands, design, technology and the arts. SME require intellectual property (legal protection for their intellectual assets) at least as much as big business but their limited means restrict the way they can use it. Looking after such clients wisely requires skills and knowledge which have taken me years to learn.
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6 Responses to What is IP Strategy?

  1. Terry Swarbrick says:

    “As we do not apply for patents, trade marks or registered designs we can give completely disinterested advice on the optimum intellectual property package”

    So those that do provide such services are not able to provide disinterested advice?

    Maybe, just maybe, they are able to give the best advice because they understand the whole process from beginning to end? For patent attorneys, that involves understanding the technology. Attorneys are drawn from the ranks of scientists and engineers, many with higher degrees and further academic and/or industrial research experience. It involves understanding the requirements and attitudes of patent offices around the world. When it comes to giving advice and maximising protection for a client’s invention, it also involves taking into account the decisions of Judge X in the Patents County Court or the High Court, those of the Appeal Court and the (now) Supreme Court as well as those of the US and European courts.

    “An inventor can patent his or her invention but equally he or she can keep it under wraps and rely on the law of confidence to prevent unauthorized use or disclosure.” Equally? No. The majority of technologies can be reverse-engineered. Only a few cannot.

    Self-promotion is one thing, but inferring that patent attorneys and trade mark attorneys give biased advise in order to make a sale is another. What the UK needs is more and better use of the IP system by businesses and that would be helped (if the patient can be helped) by promotion of the IP professions as a whole.

    As for “IP Strategists”, the term not only encompasses those who are highly qualified to provide IP advice, but it also covers those who can only act as go-betweens of clients and professionals, thereby adding communication issues to a relationship, and probably extra expense. It is fashionable terminology, but people have been successfully strategising successfully since long before any of us were born.

    • Jane Lambert says:

      Thanks for taking the trouble to comment.

      The sad fact is that a lot of patents are never worked. Many of those that are worked fail to cover their costs. Only a few of those actually make any serious money for their owners. The question that then has to be asked is why? Sometimes the client insists on pressing on with a profitless applications. But I have also had more than one client in chambers who complained bitterly that he was never warned of the risks or costs by his agent.

      The fact that a technology can be reverse engineered does not mean that it will be. Much will depend on whether it is worth the competitor’s while to reverse engineer. In a fast developing industry industry the invention may be obsolete after in a short time. Nobody is going to bother to reverse engineer or set up a production line for something which won’t be in demand for very long.

      With respect, there’s a considerable difference between knowledge gained from reading a text book, statute or law report and that gained from defending an argument before a sceptical Patents judge. The former will tell you what the law is. The latter will tell you what the law will be. For many clients it is how the law will develop with respect to their product or service that they really want to know.

      I thought I had made it clear that many agents do give good strategic advice but I can’t agree that they all do. The reason for that is that patent strategists are rather different from patent agents (and indeed lawyers) in that they provide business as well as legal advice. One of the reasons why patent agents cannot always offer business advice was offered by Barbara Cookson (who is herself a patent agent as well as a solicitor) in her perceptive article
      The End of Patent Agents
      ” in the Solo Independent IP Practitioners’ blog of 7 Nov 2010. Barbara noted that:

      “patent firms recruit from Oxbridge PhD standard candidates who are literate but want a more comfortable life than the research lab can offer. Entrepreneurial flair or experience are not generally expected. Indeed, while hanging out with students interested in entrepreneurship, I have met very few interested in patent agency as a profession; whilst those that are interested in the profession have been unresponsive to my suggestion that they join iTeams or their University business club or competition.”

      Where I think we can agree is that “the UK needs is more and better use of the IP system by businesses and that would be helped …….. by promotion of the IP professions as a whole.”

  2. Terry Swarbrick says:

    It is of course the case that not all members of a particular group have a certain skill set and many patent attorneys are limited in their ability to provide commercially valuable advice, probably due to direct graduate recruitment into private practice. However, this direct Oxbridge recruitment also applies to the barrister profession and probably more so than patents.

    You are mistaken if you believe that patent attorneys only learn the law ‘as is’ from reading textbooks. It is through actual drafting, prosecution and opposition and learning from litigation that the patent attorney ‘trade’ is learnt. Those who have had the privilege of working in-house gain valuable business experience.

    Patent law evolves at the EPO (and other offices) which is mainly the realm of the patent attorney, and the judges of the UK and elsewhere defer to the opinions of the EPO Appeal Boards, so a patent attorney is in the best position for advising a client on the likelihood of obtaining a patent (with commercially valuable claims) or on the validity of a third party patent.

    You maintain the inference that patent and trade mark attorneys are not able to give impartial advice because they exist to draft patents or file trade marks. The fact that you have dealt with clients who have complained of being unaware of the risks and costs is not supportive of your general criticism, which is completely unwarranted.

    Most patents are never worked because patentability is not evidence of commercial value and patent applications usually need to be filed relatively early in the process. I don’t see it as a sad fact, because it is simply an inevitable consequence of the process. What is truly sad is when development or commercialisation is stopped because the IP position (patentability or freedom to operate) has not been adequately addressed.

  3. Pingback: IP Strategists, Huh? What Are They Good For? Useful Tips To Avoid Fattening Up Your Patent Counsel « Gametime IP

  4. Patrick says:

    Jane,

    I enjoyed the article. I think many people misunderstand the value of strategists in the overall process.

    Terry: “You maintain the inference that patent and trade mark attorneys are not able to give impartial advice because they exist to draft patents or file trade marks. The fact that you have dealt with clients who have complained of being unaware of the risks and costs is not supportive of your general criticism, which is completely unwarranted.”

    When your only tool is a hammer, every problem looks like a nail. I don’t think Jane meant to attack the credibility of patent attorneys, but rather to point out the reality that their world view can be narrowed by their practice.

    Also, the simple fact is that while (ethical) patent attorneys will point out the risks and costs involved in patenting (not to mention the inherent problems in enforcing patents), most will only do so after the client has asked the right questions. If getting good business advice can only flow from attorneys when the client recognizes the problems well enough in advance, then strategists can provide a significant value for the remaining clients who don’t know (and have no reason to know) what pitfalls lie ahead.

  5. How goes it says:

    Just came across your blog and I’m kind of inclined with the views expressed in some of the comments.

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