This article is written by Ms Kishita Gupta from Unitedworld School of Law, Karnavati University, Gandhinagar. In this, she has discussed various aspects that one should know about working as in-house counsel of a company focusing more on the IPR related issues.
Table of Contents
Companies across industries face a wide range of potential legal difficulties and hazards associated with intellectual property in today’s competitive innovation economy (IP). Intellectual property (IP) law is a rapidly expanding practice area that safeguards human mental inventions. These works could include patentable inventions as well as literary and creative works such as publications, plays, music, and artwork. They can also include product names, slogans, logos, and packaging, as well as trade secrets, symbols, names, images, and designs used in commerce.
Lawyers who specialise in intellectual property advise their clients on how to create and protect intellectual capital. Patents, copyright, trademark law, licencing, franchising, distribution, technology transfers, and trade secret initiatives are all handled by most IP law firms. License ideas, transferring proprietary technologies, establishing licencing agreements, negotiating settlements, and doing IP asset due diligence are all things that intellectual property lawyers can help with.
There is a vast scope if someone wants to pursue their career in Intellectual Property Rights laws and one can read about it here. However, in this article, the author will be dealing specifically with the aspects that one needs to know about working as an intellectual property in-house counsel.
Even though most of the readers would already be aware of this but to have better clarity, let’s first understand what does the term “in house counsel” stands for? Simply put, an in-house lawyer is a company employee who also works as an attorney. Like any other employee, the in-house lawyer’s primary goal is to help the company meet its objectives. The in-house counsel acts in the capacity of an attorney and is therefore bound by the laws and regulations that regulate the practice of law.
Now let’s move on to the further discussions of the article.
Duties of an in-house counsel specialising in IPR
On a regular basis, in-house counsel in small legal departments with less than ten lawyers may be exposed to a practice that covers a wide variety of concerns. Whereas, lawyers at major in-house departments, on the other hand, are typically assigned to a single practise area within a certain practise group as in our case, Intellectual Property Rights related issues.
While much of the function of in-house counsel is to avoid litigation, it is not always possible. In House counsel must be prepared to oversee all legal matters, whether it is to safeguard the corporation’s rights or to defend it against claims. Counsel will frequently collaborate with outside law firm attorneys in preparing and defending the organisation against lawsuits. In-house counsel, on the other hand, is typically involved in all stages of litigation, from discovery to settlement negotiations and trial.
Some of the legal duties of an in-house counsel specialising in IPR are as follows:
- Patent, trademark, trade secret, unfair competition, and copyright issues are handled by in-house counsel on both an offensive and defence basis.
- IP in house counsel are responsible for formulating and driving strategy, including actively managing outside counsel, working with expert and internal witnesses, facilitating discovery, and establishing and managing budgets.
- They are in charge of enforcing the client’s intellectual property rights against infringers around the world, reviewing the merits of possible claims and relevant business issues, and advising business units on whether and how to pursue potential claims.
- They are responsible to provide guidance on possible trademark and/or IP licencing difficulties, as well as issues involving third-party engagements.
- Additionally, they are responsible to educate key business groups and senior leadership on intellectual property issues, such as acquisition, claim avoidance, and risk mitigation in general.
- They are a major partner with various levels of management within the company they are involved with and its affiliates as an IP in-house counsel. This position necessitates the ability to interact effectively with technology and business people at all levels, both verbally and in writing. This job works as a business advisor and counsellor on IP concerns.
- They are required to keep a close eye on industry trends, legal and regulatory developments, and the competitive landscape to ensure that copyright and trade secret legal challenges are resolved. It’s expected that the mix and balance of these tasks would change as one gets specialised with the work they are doing.
Audit and valuation-related duty
Patents and other intellectual property assets are at the heart of many technology-related businesses and transactions. Licenses and assignments of intellectual property rights, as well as the use of these assets as loan collateral, are prevalent in the technology markets. Because knowing the economic value of patents is a vital aspect in defining their trading conditions, the financial valuation of intellectual property is becoming increasingly important.
It is important in many aspects of finance, including buying/selling, solvency, mergers and acquisitions, transactions, pricing and strategic reasons, financing securitization and collateralization, tax planning and compliance, and litigation support, to name a few. Furthermore, the valuation of intellectual property (IP) is regarded as one of the most critical management strategic challenges. Market share, entry obstacles, legal protection, IP profitability, industrial and economic considerations, growth estimates, remaining economic life, and new technologies are all aspects considered in this assessment.
The IP counsel’s role entails keeping track of a patent portfolio. A patent portfolio’s monetary benefits include a monopoly position in the market for the portfolio holder and revenue from licencing the intellectual property. Strategic advantages such as first-mover advantages and protection against competing portfolio holders are non-monetary benefits. The creation of a patent portfolio can also be utilised to entice investors. This position entails patent appraisal and analysis. This is done to determine which patents are most essential in terms of revenue or strategy.
Basic requirements for the job
Other than the qualification of an advocate along with a specialization in IPR(the specialisation is not mandatory but it is an additional advantage), some other basic requirements to become an IPR in-house counsel are as follows:
- Ability to examine both design and utility patent invalidity and non-infringement concerns in response to infringement claims brought against the company, make recommendations, and carry out plans.
- Ability to examine trademark protectability and non-infringement issues in response to infringement allegations made against the company, make recommendations, and carry out the strategy.
- Ability to work closely and constructively with global colleagues in establishing case strategy and conducting technical analysis.
- Ability and expertise in all parts of intellectual property due diligence, including analysing IP portfolios, negotiating licencing and/or settlement agreements, and different forms of technology partnership agreements.
- Must accrue knowledge of invention process, state-of-the-art technologies in technologies relevant to the company and its affiliates’ business.
Pros and cons attached to the job
|Generally close to the decision-making process.||Sometimes the salary base might be less than a litigation or law firm job.|
|The work environment is more sophisticated than general practice||The exposure is sometimes constrained.|
|The working hours are comparatively regulated and hence there exists a work-life balance also.||The career states are tied to the fortune of the company.|
|By working specifically in IPR practise, one attains expertise in the subject matter.||As an IPR in house counsel, one is restricted to work in the IPR field only and exposure to varied fields of laws are not attained.|
|One also gets to deal with high profile matters and may also receive global exposure sometimes.|
|As an IPR in house counsel, one gets to experience litigation as well as the corporate culture at the same time.|
Thus, as discussed above, becoming an in-house counsel focusing highly on IPR can prove to be a great career opportunity for anyone who has an interest in Intellectual Property Rights and related aspects. If you want to know more about this career opportunity and related aspects of IPR, then Lawsikho is organising a Bootcamp for you all from 13th – 15th November 2021. In order to register for the Bootcamp, click here.
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