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In-House Counsel’s Role in Optimizing Intellectual Property

Posted by Deborah Stehr on November 9, 2022 at 1:33 PM

Intellectual Property strategy in-house counselMost businesses realize that intellectual property (IP) is a valuable asset worthy of investment and protection; yet many limit the potential of their portfolio by thinking too narrowly about the full range of IP that is owned and how best to leverage it. Having a clear IP strategy focused upon revenue enhancement can help avoid such limitations, and in-house counsel can play a key leadership role in this work by helping to develop and implement a plan that identifies, protects and monetizes their clients’ IP to the greatest advantage.

To get started helping clients optimize their IP, in-house counsel may wish to consider implementing the below 5-pronged plan:

  • Educate Management    
    A knowledgeable client is the first layer of protection for a successful IP program. Help management quantify what types of IP exist in their business and how that IP adds value or contributes to the company’s competitive advantage, or does not. This may be clear with some types of IP (e.g., royalties from patents and trademarks), but other types, such as trade secrets or URLs which may be equally important to protect, can sometimes be overlooked.

  • Conduct a Strategic IP Audit
    Help clients identify all of the different types of IP owned by the company, including any IP that is either in development or being used without full documentation. The IP audit can also uncover whether the company is using IP that is under license from a third party and if those rights are being properly exploited and reported. Counsel can then assist clients in creating a matrix of the company’s IP and its strategic function in the business.

  • Consider Revenue over Rights
    Once identified, evaluate whether the appropriate legal protection exists for each type of IP, keeping in mind the associated revenue. For example, a multi-national trademark program may be very expensive and take months or even years to secure, whereas, adding non-compete and non-disclosure provisions to company contracts (especially with employees and consultants) may be relatively simple.

  • Streamline Costs
    Help reduce portfolio costs by implementing an on-going review and cost/benefit analysis to determine whether any particular IP is worth defending or maintaining. As products and branding change over time, so does the value of previously-exploited IP. By scheduling a regular process to evaluate the value of the company’s IP, in-house counsel can help guide strategic decision-making with valuable data.

  • Create Templates to Use
    Create a customized portfolio of legal templates designed to protect IP, including, for example, mutual and one-way non-disclosure agreements (NDAs), employment and consulting agreements with works for hire, confidentiality provisions and restrictive covenants, and licenses that contain prohibitions on competitive use. If the company sells branded consumer products, policies and samples that dictate the proper use of company trademarks and logos are useful.  For more on how to create a template portfolio, see this helpful post from my colleague.

Intellectual property by its nature is often difficult to identify and value, particularly if it is part of a large and diverse portfolio. However, by developing a broad and systematic approach to managing IP, such as the one described above, in-house counsel can help their clients both optimize IP value and reduce costs. If you have questions about IP in general or creating an IP strategy for your company, please contact Deborah Stehr at dstehr@outsidegc.com.

 

Deborah Stehr is a member of our New York-area team and brings over 25 years of transactional and technology experience with a particular focus on the consumer goods industry, including digital services and e-commerce. Deborah has considerable experience in structuring both domestic and international arrangements for the manufacture, supply, distribution and sale of goods, as well as in protecting and monetizing brands and intellectual property throughout the product life cycle.

Topics: Intellectual Property, In-house counsel, deal strategy, in-house attorney, IP strategy

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Outside GC is an innovative approach to legal services for growing and mature businesses. Companies who engage Outside GC fall into two main categories: (1) those without in-house counsel who need regular, on-going legal support but do not wish to hire a full-time in-house lawyer, and (2) those with in-house counsel who do not wish to add more full-time resources to their existing in-house staff. Contact us to speak to one of our on-demand attorneys.