Patent Liaisons and IP Strategy Development

Many technically intensive companies utilize patent liaisons to augment their intellectual property (IP) work. Patent liaisons work with patent attorneys and inventors and can have a wide variety of job responsibilities, thereby helping to provide additional trained “legal” resources to a business in a very economical manner.

Some patent liaisons are expected to manage the IP processes of a business, such as determining the filing priority of the inventions a business generates, and to make other decisions associated with the overall IP management program. Other patent liaisons are expected to perform prior art searches or to work with inventors to draft patent applications and responses to patent office actions. Most patent liaisons actually do a combination of managing, prior art searching, and writing, essentially doing whatever the business needs done to achieve its IP and business goals.

While a patent liaison can have a paralegal degree, the typical patent liaison has a technical degree or is technically trained, and understands both the general technical and business details of the organization. Many patent liaisons are engineers or scientists that have a keen interest in patents, have broad technical experience, and have good communication skills, particularly writing skills. At a minimum they have a good grasp of basic patent law. Many patent liaisons study for and pass the patent office “bar” exam to increase their patent law knowledge and become registered patent agents.

Patent liaisons generally have a major role implementing the various components of a business's IP strategy. IP strategy is more than simply a patenting strategy, however, and includes other things, such as licensing programs, methods of acquiring already developed technology, methods of developing technology, and freedom-to-operate clearances for products and inventions. Generally, of all the tasks required for these components, liaisons tend to handle the more technically intensive ones, leaving the more legally intensive tasks for a company's attorneys. These liaison tasks are more operational rather than planning, tactical rather than strategic.

A patent liaison, however, can play a key role in developing an IP strategy through influence. This influence takes the form of emphasizing to the business leaders the need for an IP strategy, correctly assessing the current IP situation of the business, and helping the business generate a truly useful IP strategy document.

The first way a patent liaison can influence IP strategy is by championing the need for an IP strategy. This means emphasizing the need for developing an IP strategy in addition to research and business strategies. The IP strategy development process results in an examination of IP issues such as patents, trademarks, and various types of confidentiality, development, or licensing agreements needed by the business. Such an examination might not otherwise be done unless the need for an IP strategy is recognized.

The liaison can also make a business more aware of the need for an IP strategy by helping the organization understand the exclusivity that a patent gives the organization, the mechanics of achieving such exclusivity, and the exclusivity limits dictated by the prior art. A business may be able to protect all or part of its newly developed technology by patents, or that technology may already be in the public domain. The liaison can emphasize that by having an IP strategy, the business is more likely to correctly prioritize and resource new technology development and develop technology that can be protected by patents.

The second way a patent liaison can influence IP strategy is by leading the effort to assess the business's current IP situation. This assessment involves looking both inwardly at the business's patented technology and outwardly at the technology already developed by others. Here, the patent liaison can utilize the same literature search tools used on the operational side of implementing the strategy to also help develop the strategy by providing focused patent and literature information to the business.

Given this published information along with input from any number of sources, including customers, consultants, and the company's technical and business personnel, tough questions can be asked by the team developing the IP strategy. Such questions include asking whether or not the business's existing patents and planned patent applications provide adequate exclusivity for owned technology and if those patents and applications have any major weaknesses where others can practice equivalent inventions. Questions may also address whether or not the organization can successfully commercialize planned or newly developed technology without any infringement issues from others' patents. Other questions may consider whether or not the research strategy should be modified to include areas that could be more adequately patented. Still other questions may address whether the business wants to license developed technology to others or whether the business needs to obtain licenses from others. Obviously, any number of questions could arise depending on the business' situation.

It is best to drive this assessment of the current IP situation by first establishing the overall vision for the business. In so doing, the analysis will include not only what the business is currently doing, but also what it should be doing to meet the overall vision. This helps keep the IP strategy development team from being too narrowly focused on current research activities.

The third way the patent liaison can influence IP strategy development is by emphasizing the need for a written IP strategy statement with clear actionable items. It is very easy to develop a broadly worded strategy that says, in essence, that an organization will protect its developed technology, file patents as needed, etc., and end up with an IP strategy statement that gives essentially no useful guidance on what the organization intends to do, and more importantly, what the organization will not do.

The liaison should press the organization to add specificity to the IP strategy statement. The IP strategy statement is a good place to insert principles that will help the organization set patent application filing priorities. For example, the researchers in a company may be working on a number of different technology programs designated as A, B, C, D, and E. The IP strategy can clearly state that the company wants to develop a strong patent estate for the technology developed under program A because that technology is critical to long-term success of the business, but will only publish technical papers on any information developed under program B. Further, the strategy may state the technology developed under program C will be licensed. The strategy may also be silent about programs D and E because they simply do not appear to have adequate future business impact. Therefore, once the strategy statement is developed, the organization knows that patent applications for inventions developed under the critical programs A and C should have the highest priority and should be filed first, and then if time and budget permit, these may be followed by patent applications on any inventions that arise from programs D and E. The publications under program B can be accomplished as time allows.

It may be convenient to develop multiple IP strategies having different conceptual levels. For example, a business may first start by developing a broad overall IP strategy, followed by the development of more specific IP strategies for parts of the business. Ultimately, these strategy statements help determine the patent application filing strategy for each new invention made by the business, because that filing strategy should agree with the broader business IP strategies. Patent liaisons can influence the organization to make sure these IP strategy statements are specific enough to help this decision-making process.

Once developed, the written IP strategy statement should be a document that is communicated broadly to the organization, and is referred to and used by the organization in its decision-making processes. Therefore, the statement should be concise, understandable, and unambiguous. It should help direct actions, not suggest additional questions.

Patent liaisons, because of their unique perspective and knowledge of both patent and technical matters, are uniquely qualified to help influence the generation of IP strategy. They can impact the quality and effectiveness of the IP strategy that is developed, and once a high-quality IP strategy is developed, a business is much more likely to obtain the correct IP protection it needs for long-term success.

Many technically intensive companies utilize patent liaisons to augment their intellectual property (IP) work. Patent liaisons work with patent attorneys and inventors and can have a wide variety of job responsibilities, thereby helping to provide additional trained “legal” resources to a business in a very economical manner.

Some patent liaisons are expected to manage the IP processes of a business, such as determining the filing priority of the inventions a business generates, and to make other decisions associated with the overall IP management program. Other patent liaisons are expected to perform prior art searches or to work with inventors to draft patent applications and responses to patent office actions. Most patent liaisons actually do a combination of managing, prior art searching, and writing, essentially doing whatever the business needs done to achieve its IP and business goals.

While a patent liaison can have a paralegal degree, the typical patent liaison has a technical degree or is technically trained, and understands both the general technical and business details of the organization. Many patent liaisons are engineers or scientists that have a keen interest in patents, have broad technical experience, and have good communication skills, particularly writing skills. At a minimum they have a good grasp of basic patent law. Many patent liaisons study for and pass the patent office “bar” exam to increase their patent law knowledge and become registered patent agents.

Patent liaisons generally have a major role implementing the various components of a business's IP strategy. IP strategy is more than simply a patenting strategy, however, and includes other things, such as licensing programs, methods of acquiring already developed technology, methods of developing technology, and freedom-to-operate clearances for products and inventions. Generally, of all the tasks required for these components, liaisons tend to handle the more technically intensive ones, leaving the more legally intensive tasks for a company's attorneys. These liaison tasks are more operational rather than planning, tactical rather than strategic.

A patent liaison, however, can play a key role in developing an IP strategy through influence. This influence takes the form of emphasizing to the business leaders the need for an IP strategy, correctly assessing the current IP situation of the business, and helping the business generate a truly useful IP strategy document.

The first way a patent liaison can influence IP strategy is by championing the need for an IP strategy. This means emphasizing the need for developing an IP strategy in addition to research and business strategies. The IP strategy development process results in an examination of IP issues such as patents, trademarks, and various types of confidentiality, development, or licensing agreements needed by the business. Such an examination might not otherwise be done unless the need for an IP strategy is recognized.

The liaison can also make a business more aware of the need for an IP strategy by helping the organization understand the exclusivity that a patent gives the organization, the mechanics of achieving such exclusivity, and the exclusivity limits dictated by the prior art. A business may be able to protect all or part of its newly developed technology by patents, or that technology may already be in the public domain. The liaison can emphasize that by having an IP strategy, the business is more likely to correctly prioritize and resource new technology development and develop technology that can be protected by patents.

The second way a patent liaison can influence IP strategy is by leading the effort to assess the business's current IP situation. This assessment involves looking both inwardly at the business's patented technology and outwardly at the technology already developed by others. Here, the patent liaison can utilize the same literature search tools used on the operational side of implementing the strategy to also help develop the strategy by providing focused patent and literature information to the business.

Given this published information along with input from any number of sources, including customers, consultants, and the company's technical and business personnel, tough questions can be asked by the team developing the IP strategy. Such questions include asking whether or not the business's existing patents and planned patent applications provide adequate exclusivity for owned technology and if those patents and applications have any major weaknesses where others can practice equivalent inventions. Questions may also address whether or not the organization can successfully commercialize planned or newly developed technology without any infringement issues from others' patents. Other questions may consider whether or not the research strategy should be modified to include areas that could be more adequately patented. Still other questions may address whether the business wants to license developed technology to others or whether the business needs to obtain licenses from others. Obviously, any number of questions could arise depending on the business' situation.

It is best to drive this assessment of the current IP situation by first establishing the overall vision for the business. In so doing, the analysis will include not only what the business is currently doing, but also what it should be doing to meet the overall vision. This helps keep the IP strategy development team from being too narrowly focused on current research activities.

The third way the patent liaison can influence IP strategy development is by emphasizing the need for a written IP strategy statement with clear actionable items. It is very easy to develop a broadly worded strategy that says, in essence, that an organization will protect its developed technology, file patents as needed, etc., and end up with an IP strategy statement that gives essentially no useful guidance on what the organization intends to do, and more importantly, what the organization will not do.

The liaison should press the organization to add specificity to the IP strategy statement. The IP strategy statement is a good place to insert principles that will help the organization set patent application filing priorities. For example, the researchers in a company may be working on a number of different technology programs designated as A, B, C, D, and E. The IP strategy can clearly state that the company wants to develop a strong patent estate for the technology developed under program A because that technology is critical to long-term success of the business, but will only publish technical papers on any information developed under program B. Further, the strategy may state the technology developed under program C will be licensed. The strategy may also be silent about programs D and E because they simply do not appear to have adequate future business impact. Therefore, once the strategy statement is developed, the organization knows that patent applications for inventions developed under the critical programs A and C should have the highest priority and should be filed first, and then if time and budget permit, these may be followed by patent applications on any inventions that arise from programs D and E. The publications under program B can be accomplished as time allows.

It may be convenient to develop multiple IP strategies having different conceptual levels. For example, a business may first start by developing a broad overall IP strategy, followed by the development of more specific IP strategies for parts of the business. Ultimately, these strategy statements help determine the patent application filing strategy for each new invention made by the business, because that filing strategy should agree with the broader business IP strategies. Patent liaisons can influence the organization to make sure these IP strategy statements are specific enough to help this decision-making process.

Once developed, the written IP strategy statement should be a document that is communicated broadly to the organization, and is referred to and used by the organization in its decision-making processes. Therefore, the statement should be concise, understandable, and unambiguous. It should help direct actions, not suggest additional questions.

Patent liaisons, because of their unique perspective and knowledge of both patent and technical matters, are uniquely qualified to help influence the generation of IP strategy. They can impact the quality and effectiveness of the IP strategy that is developed, and once a high-quality IP strategy is developed, a business is much more likely to obtain the correct IP protection it needs for long-term success.