The role of general counsel is undoubtedly challenging: it requires broad, yet in-depth knowledge of an organization from a business and legal perspective. One of the unique challenges in this role is managing the intellectual property of a business.
When managing IP, a general counsel must consider many things to ensure that their IP assets are protected. This includes the availability of internal resources, current and future business activities, allocated budget, and quality of IP protection. In this article, we will present these IP management considerations and some best practices for a general counsel.
1) Understand your internal resources
Relying solely on internal resources can be challenging as it requires managing deadlines, documentation, and staff. It also requires hiring staff that are specialized in IP management. This can be costly and time-consuming, especially if there is a flux in the amount of IP tasks. We discussed this with Ingo Dauer, General Counsel for L’Occitane en Provence, an international brand with over 2,500 trademarks. He describes the challenges of managing IP when dealing with peaks in activity and how it can strain a legal team with administrative work.
An unexpected spike in activity can divert attention and resources from other important areas of your business; it can also create a burden on internal resources, which adversely affects their other responsibilities. However, before considering an external IP management solution, it is important to assess the strengths and weaknesses of your available internal resources. In this way, you can find a budget-friendly solution that compliments your business.
2) Hope for the best, plan for the worst
As the saying goes, failing to plan is planning to fail; this is also true when managing IP. An unexpected surge in administrative tasks without available resources can put a costly strain on your business. Therefore, it is important to consider the consequences of regular business activities on your IP, such as product launches, product updates, mergers, acquisitions, sales, investments, and other corporate changes.
Even with a solid plan for current and future business activities, a general counsel should also consider options in the event of requiring an overflow workforce; this can be useful when there is a foreseeable, temporary uptick in work that stretches your resources too thin. It is best to assess and consult your current or potential external IP management solution provider to determine an overflow strategy that works best for your team.
3) Maintain cross-organization communications
As a business grows, the cost of managing IP can become more challenging. Whilst a small business with a small IP portfolio is much easier to manage, sudden growth can result in an expansion of your IP assets, especially when a business expands into other products, services, or sectors.
Each IP asset is a potential revenue source. Therefore, it is important to maintain coordination across different departments to ensure that all the relevant information is captured and kept up to date. Depending on the size of your business, IP management tools can help you to organize this process.
In the same way that each IP asset is a potential revenue source, it is also a definitive cost to your business. When you expand your IP portfolio, each asset requires an increase in budget to cover various fees, services, administration, and litigation costs. For this reason, it is beneficial to consult with IP management experts who can provide you with feedback and guidance on IP portfolio management to ensure adequate protection for your business within your budget.
4) Establish high-quality IP protection
IP assets are commonly viewed as the most valuable assets in a business. The value of an IP asset can be directly associated with the quality of its protection. According to the 2017 IP Commission Report, in the US alone, the theft of trade secrets cost businesses up to $600 billion per year.
When managing IP, the potential costs of IP infringement mean that it is essential to establish and maintain adequate protection of each asset in your IP portfolio. This can be a complex task when your portfolio begins to grow or if you do not have an IP specialist within your team. Whilst each department of your organization has a role to play in protecting IP assets, managing a portfolio requires specialist knowledge of IP law to ensure that each asset is protected from potential infringement.