Changing lanes: 10 things every new IP counsel should do

Top tips for legal experts

From applying trademark, copyright and patent law to handling IP disputes and other legal matters, it is your responsibility to protect your organization in a competitive landscape. Here are 10 recommendations for how to go about this effectively, efficiently and confidently.

1. Start slowly and take stock

You might want to leverage prior experience and make your mark by immediately introducing fresh, bold ideas — but this is not necessarily wise. You will be much better off watching, learning and asking questions until you know how things work in the IP department and the organization as a whole. This enables you to learn from what is working and identify potential improvements for what is not.

2. Review the IP portfolio closely

To protect an organization's IP rights, you must first understand its IP assets thoroughly. Ensure you receive a comprehensive overview that covers every patent, trademark, design, domain and other IP right the company possesses. Ask questions as they come to mind, but be careful not to make any assumptions based on this initial review before analyzing the structure and strength of the portfolio.

3. Learn the team's structure

Study an organizational chart or similar resource explaining team members' roles and responsibilities. This is an effective way to understand the parts your coworkers play as well as a chance to see how you will fit into the department. Keep in mind that definitions on paper may not capture the day-to-day reality of the IP team; it is prudent to watch, listen and learn before drawing conclusions.

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, not least:

• Managing patent filings for national IP regulatory offices
• Overcoming challenges during prosecution
• Creating briefs for legal affairs concerning IP rights
• Producing declaration-of-use affidavits to renew trademarks

While you represent the legal perspective on IP, remember that there are other ways to interact with these assets. Developers, engineers, designers, marketing personnel and executives can offer different viewpoints and may have varying needs — all of which you should take time to learn as the new IP counsel. Ideally, meet with key stakeholders in informal settings, such as during lunch or a coffee break, to get their feedback on relevant matters.

5. Confer with team members one-on-one

Current members of the IP team will have had many valuable interactions during the course of the company's legal dealings and can likely offer practical insights. However, until they know your working style and values, they may be wary. To break the ice, it is important to express who you are and what you bring to the team, department and organization as a whole. One-on-one meetings are a great way to do this because they encourage a more open exchange of ideas. Spend more time listening than talking in these first conversations, but be sure to share your own thoughts, too. After all, getting to know someone is a two-way process.

6. Introduce yourself to external partners

These internal working relationships are paramount, but you will be dealing with many third-party partners and outside vendors as you tackle legal issues and handle IP rights. From law firms to software vendors and from IP service providers to registering offices, getting acquainted with the representatives of these organizations is vital to your team's continued success. Do not start talking about cost-saving strategies or other changes to service agreements during these initial meetings; save those for after you have established a solid rapport.

7. Examine past, present and future costs

Once you become familiar with the department's ins and outs, it is time to 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. Introducing cost-saving ideas from your career background will generally be welcomed.

8. Map out the workload

The world of IP law never sits still. As such, IP departments often appear overtaxed – but that does not mean anyone on the team should deal with an excessive workload. Get a sense of what the typical daily schedule is and ask for feedback and opinions. Work collaboratively with the team to adjust assignments as required, using smart solutions that do not compromise the quality or scope of deliverables. Most importantly, seek out opportunities that improve work efficiency and the employee experience simultaneously.

9. Review processes

Identify and collect all existing process-related documents relevant to IP, from licensing to patent prosecution. If these manuals are accompanied by comments like "We should have updated this document long ago" or "This more describes the theory," then you have something to add to your to-do list. Of course, always make sure to understand the history and facts before implementing a change. Do not try to alter any processes early on without a general buy-in from most of your team members.

10. Track your performance

Various key performance indicators (KPIs) illustrate how well IP activities contribute to department-specific objectives and the business's commercial goals. These data points may range from the average length of the patent-drafting process to the number of office actions received to the success rate of legal challenges (both initiated and defended). Keep an eye on these metrics and update departmental analytics tools where necessary to ensure your team has substantial evidence to support conclusions and, ultimately, actions.

Thriving in your IP counsel role

The fascinating thing about any vocation is that there is always more to learn. When we are open to knowledge and as reflective upon mistakes as successes, our personal and professional development never ceases.

Get in touch with our Consulting team or explore our blog for news, analysis and insights to intrigue every mind.