Who is the custodian and guardian of Intellectual Property in your firm?

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As part of our ongoing series examining the ecosystem necessary to bring technology to market, we asked David French, a senior Canadian patent attorney with 35 years of experience, to discuss the importance to a company of protecting its IP and how creating the position of “IP Coordinator” can facilitate the process. This is the second of David’s commentaries and we welcome your comments.

By David French

In my previous post, I addressed the importance of a company’s intellectual property and how it can contribute to the bottom line, negatively or positively. In this post, I address the issue of how intellectual property is being managed within your organization.

Who in your organization knows or is able to understand all of the issues and requirements in order to ensure that you have good IP hygiene? Frankly, many companies just assume their lawyer is going to look after these issues. Well, your lawyer may provide advice in the boardroom, or possibly even in a reporting letter, as to many of the things you should do in order to keep your intellectual property regime in order. But who will remember all of this?

This is where the concept of an Intellectual Property Coordinator becomes important.

The concept of an IP coordinator has not yet been widely embraced, but this role will inevitably become recognized as businesses become more sophisticated in order to operate in the highly competitive world marketplace. An IP coordinator is the guardian of the intellectual property within the firm. The role of an IP coordinator is to understand what should be done and see that it is done on a timely basis.

An IP coordinator is a key individual in communicating with your outside legal professionals. He/she is the individual who should be present when your patent lawyer, your trademark lawyer and other legal advisors speak. This is the person who should be making notes and remembering what should be done to maintain good IP within the firm. This is the person who will explain what your IP lawyer just said after they leave the boardroom. Your IP coordinator is your contact with the IP universe, your scout, your guide, your Man Friday in matters IP.

An IP coordinator will never replace outside legal professionals. You’re still going to need to hire a patent agent, trademark agent, a corporate lawyer, a media lawyer and so forth to address individual cases as they arise. But your IP coordinator can see that the things that need to be done do get done and done properly.

Your IP coordinator can help maintain cost control over your IP expenses; is this technology really worth patenting? Do we really need to obtain trademark registrations in Australia? Your lawyer, when questioned, is likely to reply, “I’ll get you the best IP rights that you deserve wherever you require.” But your lawyer is unlikely to tell you whether your product is a good business investment and whether having a patent on a feature of that product will be money well spent.

Progressive firms are beginning to realize that they should designate someone within the firm to fulfill this function. Not a lawyer. Not an accountant or a bookkeeper. But a person with some technical skills who is able to learn and is able to communicate, who will be enthusiastic to share with the firm what they have learned by exploring this new and important field.

In the future, no firm of any decent size will be able to operate properly without having an IP coordinator.

David French is the principal and CEO of Second Counsel Services, which provides guidance for companies that wish to improve their management of Intellectual Property. For more information visit www.SecondCounsel.com.

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