Intellectual Property Strategy Consultants: A New Model for the Small to Mid-Size Corporation

As a business leader in a small to mid-sized corporation, you know that businesses such as yours are increasingly looking toward intellectual property as a means to generate assets. This is not surprising because it is estimated that less than 15 % or greater of your corporation’s value today is situated in its tangible assets. (See for example, http://www.ipfrontline.com/depts/article.asp?id=3674&deptid=3) Not all of this intangible value is located in your patents, off course. Indeed, your corporation may not even own any patents today. But if your organization extracts measurable value from proprietary technology or products, corporate value is heavily reliant on your patent and intellectual property strategy. That is, if your corporation’s technology and/or products are valuable, another company is likely to want a piece of the action, which, will result in erosion of your sales and profits. If this is the case for your corporation, you may be wondering how your company can get into the intellectual property strategy game.

As an IP Strategist and owner of an IP Strategy and Consulting service (more info here: http://www.jackiehutter.com/), I believe the answer to this question is fairly simple: you need people. But, people are expensive. And, they are even more expensive when they are part of your corporate headcount (as opposed to being hired when needed from outside counsel ranks on an as-needed basis). Before you say that your corporation cannot afford to have an intellectual property strategy because you cannot afford to hire an attorney to handle your intellectual property strategy in-house, you should consider what I believe to be a “new model” for corporate intellectual property. In short, you may be able to do turn the existing paradigm for in-house intellectual property management on its head by engaging a highly trained consultant to design your strategy for you, without being saddled with the ongoing headcount costs for this expert.

When a corporation recognizes the need to embrace intellectual property strategy inside the organization, the traditional model is for the corporation to hire its first in-house intellectual property attorney to be a full-time employee. But, hiring an intellectual property attorney may not be the best way to affect your intellectual property business goals.

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.

Applying this model to your corporation, the intellectual property strategy consultant will learn your business and work with you to design an asset generation directed intellectual property strategy. She will then work with you to identify cost appropriate outside intellectual property counsel to implement the strategy. Your intellectual property strategy consultant will check in with your outside counsel and your corporation at stated intervals to ensure that your intellectual property strategy is being deployed in alignment with your business goals. When you are a real player in the intellectual property strategy game, you will likely need a full time in-house intellectual property strategist. However, by this time, you will be educated in the process and will certainly be better able to hire the right person to take your organization to the next level.

So, if your corporation is seeking to implement an asset generation model for intellectual property, but is turned off by the high cost of hiring and supporting junior or senior level intellectual property professionals to manage your program, you should consider hiring an intellectual property consultant. I believe that this “new model” presents a fantastic opportunity for a savvy small or mid-sized company to get into the intellectual property game in a cost effective way.If your organization is interested in recommendations in this regard, you can contact me directly.