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10 things every new IP counsel should do

Burkhard Josuhn-Kadner / January 18, 2021
10 things every new IP counsel should do

If you have just taken on the responsibility of serving as an IP counsel in a new organization, congratulations! You are in for an exciting ride, full of innovative projects and positive transformations. However, your early tenure in this position can also be hectic, particularly if you move too quickly without getting the lay of the land. To ensure a comfortable start to your new role, we recommend taking a closer look at our advice for IP counsels in new positions:

1. Start slow and do not change anything immediately

Understandably, you might want to make your mark on the IP department by introducing bold, new ideas instantly, but this is not necessarily wise. The rest of the team might be doing just fine in terms of their processes, and you have no way of knowing right away that your methods will be ideal. You will be much better off watching and learning, not to mention speaking with team members and other company stakeholders, until you know how things work in the department (and the organization as a whole).

2. Review the IP portfolio closely

You cannot protect an organization's IP without a thorough understanding of the assets it holds. Receive a comprehensive overview that covers patents, trademarks, designs, domains and any other IP the company possesses. Ask questions as they come to mind, but be careful not to make any assumptions based on this initial review before you really understand the structure and strength of the portfolio.

Contact our IP consultants now!3. Learn the team's structure

Likely, an organizational chart somewhere explains team members' roles and their associated responsibilities. That gives you the basic gist, for sure, but the definitions on paper may not precisely match up with the reality of how the IP team functions on a day-to-day basis. In keeping with the first point on this list, you will be best off watching and learning.

4. Meet key stakeholders

As part of the IP team, you will spend plenty of time dealing with the "nuts and bolts" of IP law and strategy, such as:

  • Patent filings for national IP regulatory offices
  • Overcoming challenges during the prosecution
  • Briefs for court disputes over rights to IP assets
  • Declaration-of-use affidavits to renew trademarks and so on

Nevertheless, others elsewhere in the company also have a stake in its IP. People such as developers, engineers, designers, marketing personnel and executives can offer a different perspective that you, as counsel, should take the time to learn. Ideally, meet with key stakeholders in informal settings like lunch or a coffee break to get their feedback on IP-related matters.

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Meet with key stakeholders for coffee or lunch. Collect their feedback, listen carefully and identify their expectations. Ideally, these meetings should take place regularly.

5. Confer with team members one-on-one

When you first become part of an IP team, those already on it most likely do not know you and may be wary. It is important to express who you are and how you can help the department and the organization as a whole. One-on-one meetings are the best way to do this, as they encourage a more open exchange of ideas. Remember to spend more time listening than talking in all of these first conversations, but be sure to share your own thoughts as appropriate.

6. Introduce yourself to key partners

Relationships with other IP team members and the company's key stakeholders are undoubtedly meaningful. But you will also be dealing with many third-party partners and vendors in your operations, ranging from law firms, service providers and investigators to software vendors. Getting to know the representatives of these organizations is just as vital to your team's continued success. Do not start talking about cost-saving strategies or other changes to service agreements with partners during these initial meetings. Save those for after you have established a solid rapport.

7. Examine past, present and future costs

The challenge of constantly providing more work despite reductions in headcount and budget are well-known in the IP field. Once you become familiar with the department's ins and outs, you must closely review expenses and understand their background. Start by looking at costs over the last three years, then check the existing budget and compare current expenses with the end-of-year cost forecast. Look closely to identify primary cost drivers as well as examples of excessive and unnecessary spending. Maybe you can identify cost-saving ideas from your experience, which will typically be welcomed.

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Understand the IP-related costs over the last three years, review your existing budget and compare the current expenses with the end-of-year forecast. Keeping an eye on the future while having a solid knowledge of past costs paves the way to success.

8. Map out the workload

IP departments often appear significantly overloaded, but that does not mean anyone on the team should deal with excessive workloads. Get a sense of what the average day-to-day schedule is and ask people's feedback on it. Then, work collaboratively with the team to adjust the workload as required, using smart solutions that do not compromise the quality or scope of deliverables. There is always the potential to improve work efficiency.

9. Review processes

First, identify and collect all existing process-related documents relevant to IP. If people provide a process document with a comment like "We should have updated this document long ago…" or "This is more describing the theory but…" you add an item to your to-do list. Understand the history and the facts first before starting a change. Do not try to alter any processes early on without having general buy-in from most of your team members.

10. Track your KPIs

There should be various clear key performance indicators (KPIs) that illustrate how well IP activities contribute to department-specific objectives (and the business's overall goals). These data points may range from the length of the average patent drafting process to the number of office actions received to the success rate of legal challenges.

Keep a close eye on these metrics and look into how data is collected and categorized to determine them. It may ultimately be necessary to update the department's analytics tools so that your team always has substantial evidence to support actionable conclusions that, in turn, drive bold new strategies and initiatives. Understand how the input for your KPIs is provided and how it contributes to the KPIs. Review the current level of KPI achievement and think about measures to influence and improve specifically underperforming KPIs.