What is an IP Liaison?
Also called a Patent Liaison, Patent Facilitator, Patent Coordinator, or any of several other titles, an effective IP Liaison provides an efficient and constructive interface among inventors, management and patent counsel for an organization, as well as IP-related support services. Many large corporations have established formal IP liaison positions in acknowledgment of the importance and breadth of work required to develop and maintain a strong intellectual property position, but smaller companies and startups are also realizing significant benefits and efficiencies from using IP Liaison services. IP Liaison services can be provided by a consultant / contractor, or by a full-time employee of an organization.
What is the need? Some questions:
- How are inventions disclosed or received in your company? Are ideas satisfactorily documented, witnessed, recorded and researched for patentability? How are decisions made regarding how best to protect inventions? Are these occasional tasks best performed or managed by the inventors themselves?
- Is your strategic IP decision-making adequately supported by timely diligence efforts? Are you asking fewer questions than might be desirable, for lack of ready support in these matters? Do you usually have enough background information to make effective use of meetings with patent counsel? Are you comfortable with information developed by employees whose primary responsibilities and training are directed elsewhere?
- Is your patent counsel getting the information needed to obtain appropriate protection for your inventions? Are key aspects of inventions being addressed in each patent application? Are your patent applications being satisfactorily reviewed before filing, with understanding of the invention, of patent construction, and of company interests? Is patent application status being tracked with a view to your evolving technical interests?
- Does your company have a process in place to investigate the intellectual property ramifications of introducing a new product, or of making changes to existing products?
- Are you keeping constructively abreast of competitive / new intellectual property that may impact your business area? Are there important nuggets of IP in your company's intellectual attic, or elsewhere in your technical field, that may have been overlooked?
- How is your company's IP portfolio monitored? Is portfolio information readily accessible to those who need it? Is an IP database needed, or requiring maintenance? Might your company benefit from an employee incentive program to encourage invention disclosure, or if you have such a program, is it effectively managed?
- Do your employees have ready access - a first and positive point of contact - to intellectual property information and training?
The IP Liaison position
A skilled IP Liaison can help your organization respond comfortably to many of the questions posed above. The role of an IP Liaison will vary widely with the skills of the individual and the needs of the hiring company, but the position typically reports through an employee at an executive or director level, interacts with employees at several levels in the organization, and includes responsibilities that bridge several disciplines. Depending on the circumstances, an IP liaison may fill company needs at any level, ranging from an administrative assistant role, to effectively managing a company's entire IP portfolio.
Typical qualifications sought for a candidate to provide IP Liaison services include:
- Excellent communication skills at all levels and across disciplines in a company.
- Strong organizational and multitasking / time management skills.
- Registration to practice before the US Patent and Trademark Office (that is, a patent agent or patent attorney), ongoing training toward registration, or other demonstrable knowledge of patent law.
- At least moderate familiarity with the technical field of the hiring company, commonly including prior work experience in a related field, and in some situations requiring an advanced degree in the field.
Additional characteristics desirable for success in an IP Liaison role, along with a real interest in working in the intellectual property field, preferably include:
- A demonstrated self-starter.
- Good meeting facilitation / management skills.
- Willingness to routinely perform low level as well as high level tasks.
Examples of specific IP Liaison activities and services
Following is a list of services I have performed for clients as an intellectual property consultant / consulting IP Liaison. The list is representative rather than comprehensive, but overlaps well with the activities of other consulting and full-time IP Liaisons with whom I have interacted. This list does not include technical or technical management consulting activities.
- Work with inventors to flesh out invention disclosures, assist in identifying core aspects of inventions, prepare supporting figures, charts, and written material as needed.
- Track all ongoing IP projects for a company. Organize / coordinate / facilitate timely meetings for product or project clearance reviews, foreign filing and other decisions.
- Perform patent searches or subcontract patent searches to search firms as needed, review search results with inventors or other project stakeholders.
- Provide regular updates / reviews of competitive and related IP.
- Provide technical analyses of patent portfolios, prepare reports and make associated presentations. Support or conduct IP mapping or IP “mining” efforts.
- Establish and facilitate patent review board meetings.
- Prepare information packages to support legal counsel in drafting patent applications.
- Prepare initial drafts of patent applications for review by patent counsel and review patent application drafts prepared by patent counsel.
- Gather information, work with inventors and coordinate feedback to patent counsel to support the preparation of responses to Office Actions.
- Develop and maintain intellectual property databases, including custom format databases and associated software.
- Facilitate brainstorming meetings and meetings among inventors, management and patent counsel. Provide a positive and efficient conduit for communication concerning patent matters.
- Perform non-patent literature searches, acquire patent copies, file histories, technical documents, translation services as needed.
- Perform technical analyses associated with IP matters that are within the Liaison's technical expertise.
- Provide patent-related training and a first point of contact for patent questions.
- Provide notary services associated with patent assignments.
Results vary greatly with the needs of the Company, the skill set of the Liaison, and personal dynamics in each situation, but potential benefits of having appropriately skilled IP Liaison services available can include:
- Improved quality of the company’s patents and IP portfolio.
- Increased number of invention disclosures and patentable inventions.
- Better informed executive decisions regarding intellectual property.
- Improved dynamics among management, inventors and patent counsel.
- More efficient interaction with legal counsel.
- Broader and more positive appreciation of intellectual property matters by employees.