“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.