Management of Intellectual Property assets- non attorney practice & perspective.

EprointIP

by Dennis Escalante

Intellectual Property has become an undeniable valuable asset for companies. Having the proper counseling can lead companies to have a strong globalized safe presence which in turn transforms into money and success. This however involves a number of transactions, paperwork, strategy and budget planning as well as an understanding of the actual practice in the field rather than the Law lines- going beyond the Law- and gets the actual hands-on work properly carried out.

Congruously managing an IP portfolio but most importantly, maintaining it in a good standing requires a multi-disciplinary team composed of various members from different backgrounds. There is however an essential- yet usually underestimated- role of non-attorneys members whom bring to the IP field a different touch and the perfect fit to catapulting the practice. Knowing what is required to conduct such work may prevent your company from entering serious, litigious and endless processes.

Whether your work entails the filing of a single application or the management of the most complex litigious process, having the proper team to cover your back will avoid unnecessary headaches. Whether you are looking for an external IP service provider or for in-house practitioner members, the ideal IP Administrator will need to demonstrate the following:

  1. Understanding of the practice and operation of the law: It`s clear, we IP Administrators are not attorneys- and we are not trying to be one- but understanding the practice of the law will provide the sufficient foundations to accurately perform the job and be able to safeguard the client`s rights in the best manner possible. Whatever is written in the Law is not strictly followed (at least from my experience) and that is when this role becomes imperative in the day to day work. This can be complemented with the proper training.
  2. To be detail oriented: Who has not missed at deadline at least once? And although it is not acceptable; we are all humans and can make mistakes.. Nonetheless and in order to minimize such a risk, make sure your team is detail oriented. An IP portfolio management requires people who are committed to read between the lines, to see the missing dots, to identify the errors and glitches and point them out. This will ensure that the company`s rights are all lined up and in good order.
  3. Capable of finding solutions: Thousands and thousands of office actions, cumbersome procedures, notifications, TM Offices` letters amongst others are received at an IP administrator` desk. It is not only about docketing the response date properly, it is about think beyond superficial and find the proper solution, strategy and way out to reach the protection for the client`/company. Think outside the box!
  4. Think globally: The expansion of a company goes hand in and with the internationalization of a portfolio; this will definitely require the presence of people within your team who are capable of speaking multiple languages, who can smoothly communicate with outside and foreign counsels. People who can sympathize with different cultures and backgrounds, but most importantly will use these cultural differences to get the best out the agents for the good sake of the company. Make sure your team`s members plan globally, understand international treaties relating to IP protection and are open to learning opportunities.
  5. Critical thinker: This can be summarized as: “do your homework and research”- go find second opinions, investigate and complete all tasks with this principle. Mediocracy will not take you places. Working in IP there will not be a final word or a 100% certainty, and this is when the critical thinkers make a good fit for IP managers who need to go beyond than the single individual subjectivity.  This goes also in tandem with the analysis of complex data.
  6. Customer service skills:  Assertive communication is key for the success of the IP protection – this applies for internal and external team members.  Ensure to explain yourself as broad as possible and speak out your ideas. IP administrators require being also great listeners who can demonstrate ability to comprehend the operation of the dailies. This will in turn make a great work environment and who does not enjoy that?
  7. Enjoy preventing problems: What is special about IP is that it helps clients in the prevention disputes rather than solving an existing one. IP administration is about helping people protecting ideas and inventions and making sure their rights remain enforced, how cool it is to help clients preserving their business and see them grow- an ideal IP administrator must understand this untouchable value.

All of the above can be reinforced with proper training and experience; however some of these are soft skills that ideal members will demonstrate since day one. IP management is a fascinating world in which non-attorney individuals can develop a fruitful and bright career helping the business moving forth and creations remaining protected. The above has been written from the perspective of my 6 years of experience practicing as an IP administrator and having seen people succeed, but also having seen some that have failed. Constant evaluation, learning and mentoring will make the best out of your IP team – our minds never stop, nor do the creations!

Should you require legal counsel in relation to this and other topics do not hesitate to contact us on: info@eproint.com

Tags: , , , , , , , , , , , , , , , ,
Well Known Trademarks in Costa Rica

Share this article

You May Also Like

St. Kitts & Nevis

0
We have been informed of a memorandum issued on 24th September 2020 issued by the Ministry of Justice and Legal…
Menu