If your corporation is small or mid-sized with little existing patent or intellectual property infrastructure, the headcount cost of hiring and supporting an in-house attorney, even at a junior level, is likely daunting. Even if your corporation has the HR resources to allow you to hire and support a junior level intellectual property attorney, someone of this skill level may be quite proficient at the legal aspects of her position, but it is unlikely that she has the requisite business skills to work with you to develop and deploy an effective patent business strategy. (And, quite honestly, do you want to her to learn on your dime?)
You now may be thinking that your corporation will have to bite the bullet and hire a senior intellectual property lawyer at a significant headcount and support cost so that you have the muscle needed to realize your strategic intellectual property plans. This could be a mistake. In my experience, a good number of senior in-house intellectual property attorneys do not understand the asset generation aspect of intellectual property strategy. In short, the “old timers” grew up in a dusty world where patents were the province of the “green eyeshade” type experts, where business pragmatism did not made only infrequent (if any) appearance. For example, a Chief Patent Counsel at a major corporation with 100’s of patents once looked at me dumbfounded when I said that a business leader wanted me to work on valuation and exploitation of his business’ patent portfolio. This Chief Patent Counsel’s response to the business leader’s directive: “But, Jackie, that’s not our job—we’re just patent lawyers after all.” This senior in-house intellectual property counsel had no interest in patents as assets; rather, he viewed his roll merely as a “traffic cop” managing the flow of documents through the company and controlling associated costs. As long as deadlines were met and costs were contained, he was doing what he needed to do to protect the corporation’s intellectual property. If your corporation desires to be focused on asset generation, this type of patent attorney, however senior, will not help you meet your business goals.
Given the limitations and costs of the “old model” of staffing to meet in-house intellectual property needs, if your corporation is thinking about hiring its first in-house intellectual property counsel so that you can get in the intellectual property strategy game, there may be better ways to spend your company’s money and resources. To this end, I believe that there is an emerging opportunity for intellectual property strategy consultation services, whereby your corporation can engage an experienced intellectual property strategist to work with your organizaiton to design and deploy a cost effective program. With such a model, your corporation will benefit from the consultant’s deep base of intellectual property and business expertise, without also being saddled with the costs of having and supporting a highly paid employee within your organization.