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All you need to know about working as an in-house counsel with a heavy IPR focus

November 11, 2021
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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.

Introduction

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:

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:

Pros and cons attached to the job

Pros Cons 
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 practiceThe 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.

Conclusion

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.

References


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