The Role Of An IP Professional

Introduction

Intellectual assets are created when the thought processes of the human mind are converted into material form, either by reproducing them in writing or recording them orally or digitally. Intellectual assets which can be protected by law are termed Intellectual property (IP). Thus all forms of intellectual property are intellectual assets, but all intellectual assets are not intellectual property. Again intellectual property can be classified as ‘statutory’ intellectual property such as Patents, Trade Marks, Copyrights, Industrial Designs, Plant varieties, topographies of printed circuits, geographical Indications and ‘non statutory’ such as trade secrets, confidential information, trade dress, the equitable right to prevent ‘passing off’.

What is an IP professional?

An IP professional is a person who firstly is able to recognize intellectual assets, is able to differentiate between an intellectual asset and intellectual property, and is able to classify an identified intellectual property into its various forms. Secondly, once an intellectual property is identified, the IP professional, such as the Patent Attorney or Patent Agent or the Trademark Attorney or Trade Mark Agent is able to provide cost effective solutions to fortify the intellectual property to the fullest extent possible. Thirdly, once intellectual property rights are obtained the IP professional, typically an IP manager, optimally manages these rights by timely renewals, periodic audits, being alert about breaches, extending the rights to other countries and products or services. Fourthly, in the event of a breach of these rights which may be in the form of infringement, piracy, counterfeiting, passing off or violation of the terms of an agreement, again an IP professional, typically an IP litigator - is able to advise the intellectual property right holder on the best possible solution not only to seal the breach but also to prevent its recurrence in the future. Another class of IP professionals are involved in IP transfers. These professionals generally lawyers help in negotiating and preparing the documents needed for the assignment or license of IP rights from one person to another often from one country to another. The IP professionals are also responsible for supervising due diligence of the IPRs being transferred. Finally for identifying new technology and progress of an organization, again an IP professional such as a Patent Analyst or an IP researcher is able to conduct searches in these areas, map the search results and provide danger free unhindered routes for future growth. Therefore, IP professionals assume several roles in the furtherance of the commercial and technological progress of an organization. It will be appropriate now to examine the qualifications, skill sets, functions and responsibilities of IP professionals in each of these roles.

At one end of the scale we have the Analysts and Researchers. These professionals fall in two distinct verticals: the legal and the technical. In the legal vertical the IP analyst and researcher analyzes and researches IP case laws and precedents to identify specific issues in legal proceedings. For instance, in the field of Patents, specific legal issues relating to patentability and inventive step with respect to particular jurisdictions like the USA or Europe or India may be required to be researched or analyzed in a specific case. Again the exact interpretation of the sections of the Law in specific jurisdictions may be needed so as to be able to manufacture, export or import a product. Legal researchers are generally lawyers and part of Legal processes Outsourcing firms [LPO] On the other hand technical research and analysis involves study of patent and non patent literature to determine where an organization faces infringement, where modifications or adjustments in technology may be needed to avoid infringement. The technical researcher is generally an engineer or post graduate in the field being researched or analyzed. In both cases the analyst and researcher is also equipped with knowledge domain, knowledge of internet databases and of the tools for searching and mapping generally as part of a KPO. i.e. a knowledge process outsourcing firm.

The next IP professional is the IP prosecutor, typically a Patent or a Trade Mark Agent. These professionals are often referred to as IP Attorneys or Trade Marks and Patent Attorneys. These professionals assist enterprises in identifying their IPs, in consultation with in house IP managers, preparing the documentation necessary for obtaining and securing the Intellectual property right and prosecuting the application through the maze of administrative and bureaucratic rules and regulations set up by each country for the grant of these IPRs. In the field of Patents the IP professional is expected to have expertise and qualification in the Patent system of the country in which he practises at the same time he/she is required to be technically qualified in the field to which an invention relates. The patent specification which leads to the grant of the Patent needs expert techno-legal skills so that the rights which are granted are sturdy and well fortified and can withstand the onslaughts of the market place. In countries, such as India, the IP prosecutor also needs to have argumentative skills to argue proceedings before the IP office. In the field of Trade Marks, the IP professional such as the Trade Mark Agent, is a person qualified under the Act of the Country and needs to have basic skills to identify protectable trade marks, classify the trade marks to be protected into appropriate classes and argue matters before the IP office of the country. The IP prosecutor may or may not be a lawyer, but he also generally directs the work of the IP analyst and researcher assists the IP litigator in counselling and opinion work.

Finally at the other end of the scale is the IP Manager. The IP manager is a corporate assignment and therefore the IP manager is generally attached to one enterprise or a group of enterprises, although recently a few independent IP management firms have set up shop. The in house IP manager acts as an interface between the enterprise management and the other IP professionals in connection with the IP of the enterprise. On the other hand the independent IP management firms involve themselves with tasks such as IP brokering, [bringing together IP owners and investors], IP Audit, due diligence of the value and validity of the IP which is sought to be transferred. The IP manager usually has some qualification or experience in management administration, typically marketing or finance in addition to legal qualifications [which are optional].

The high profile IP professional is the IP litigator involved in trial work through various tiers of the Courts in the Country. The IP litigator prepares case papers and arguments either in support of the IP holder or in the defence of a Patent, trade mark, design or copyright infringement. The litigation may be in the nature of a civil suit or a criminal case and it may be involve the original trial or the appeal. The IP litigator is generally a well experienced lawyer and often is part of a team of lawyers. The IP litigator must have in depth knowledge of the rules of procedure of the court in which the litigation is proceeding and have persuasive skills of argument and cross examination. The IP litigator is supported by both the IP prosecutor and the IP analyst and researcher.