Let me start by saying, I’m not a licensed patent lawyer or an IP lawyer by any definition. No, that ship had sailed by the time I clerked with a major Midwestern law firm and the head of the Intellectual Property Practice Group laughed out loud at my undergraduate double majors in political science and history. The true practice of intellectual property as a substantive legal area is largely one involving a deep understanding of the sciences (and I don’t mean political science).
However, the business side of intellectual property (and of course, the business side is what this blog focuses on) requires the ability to identify valuable intellectual property, conduct a risk-benefit analysis, determine what protections are appropriate and affordable under the specific circumstances, and then (and most importantly) work with you to implement and execute a plan to PROTECT and MONETIZE your IP.
So, does your business lawyer need to be a licensed patent lawyer? No. What your business lawyer does need are the following skills/abilities:
• Access to a talented licensed patent lawyer in the same firm (and here’s the critical part) who does more than just process and enforce patents and trademarks – one who regularly works on IP matters and understands how they affect your business activities, relationships and agreements.
• A complete understanding of your business and a specific understanding of the types of IP you have or intend to develop.
• The ability to identify risks and opportunities to and for your IP and to inform you when one may outweigh the other.
• Practical experience in structuring and handling mergers, acquisitions, licensing agreements, joint ventures and other transactions involving valuable intellectual property.
• And finally, an open and creative mind to help you to maximize and realize (i.e., monetize) upon the value of your intellectual property.
Whether you are a technology company, a software developer, a manufacturer, an energy company or any other type of business, you likely have valuable IP – make sure you work closely with capable and experienced legal counsel to protect it.