Managed IP Functions
In-House IP Counsel, PLLC
Serving Corporate IP Needs
Managed IP Functions
The following IP functions are representative of functions that may be accomplished or managed by in-house IP counsel.  I have experience performing or managing each of these functions, including evaluating corporate IP needs in light of these functions and making and implementing strategies to accomplish related goals within allowable budgets.  

Idea Capture
Develop and implement invention disclosure forms
Manage inventor notebook procedures
Facilitate brainstorming
Establish and manage deadlines
Idea Review
Set committee review procedures
Build a team to assess technical and commercial feasibility and market demand
Manage or accomplish prior art searching
Compare ideas to prior art and advise committee
Application Preparation
Initiate and promote Inventor – Patent Drafter communication
Establish budget and timing for drafting of application
Pre-filing review criteria:
Claims commercially focused to capture likely infringers – do not require multiple parties to infringe
Design around feedback loop assessed
Evaluate OUS potential and design to fit OUS practice, as appropriate
Provide inventorship review and memorandum when advisable
Ensure compliance with assignment agreement or license
Government funding awareness
Review formal documents
Obtain inventor signatures
Facilitate IDS filing – engage with attorneys, inventors, and contributors
Outside the US Decisions
Compare PCT options with individual country filings
Prepare claims for appropriate number and focus
Manage market evaluation
Evaluate likelihood of successful enforcement
Plan and budget for prosecution costs
Plan and budget for maintenance costs
Coordinate responses
Evaluate interview options
Engage inventors in responses
Arrange for pre-appeal briefs when needed
Arrange for appeals when needed
Pay issue fees and establish and manage appropriate checklists
Patent term extension check
Review patents for errors
Post Issuance - Assess need for and manage:
Evaluate portfolio for continuing value
Cull patents and applications based on changing business conditions
Manage fee payments
Compare claims to competitor products and services and amend as needed
Product Clearances
Identify products and methods in need of clearance evaluation
Define scope of clearance analysis
Integrate product clearance tasks with product development timelines
Budget for clearances to be provided
Evaluate product literature and packaging in light of clearance analyses
Present practical alternatives and design options to business leaders
Communicate preliminary, alternative, and final clearance analyses
Formally present and document delivery of all clearance opinions
Manage updates of clearance opinions in light of pending patent applications and product revisions (marketing, regulatory, periodic)
Competitive Intellectual Property Analysis
Set up periodic reviews of competitor patents and applications
Deliver summaries of reviews to business leaders
Landscape patents and applications of others in industry
Monitor patent claims in prosecution
Identify competitive products
Compare competitive products with company patents and applications
Identify and track potential infringements (offensive and defensive)
Attend industry trade shows and catalog disclosures
Intellectual Property Training and Recognition
Prepare and deliver educational presentations to employees
Conduct informal training for employees
Design and manage inventor remuneration program
Recognize successful inventors with remuneration, presentations, and scheduled appreciation meetings with management
Organize and maintain agreements
Identify existing contractual terms and implement compliance mechanisms
Analyze and track royalty obligations
Non-disclosure agreements - manage execution, information collection and security, term, and termination
Negotiate new agreements and fit in existing agreement management structures
Identify patents suitable for out-licensing
Compare third party products with company patent claims
Analyze countersuit potential

Negotiate licenses with potential licensees
Draft and negotiate license agreements
Administer license agreements
Litigation and Pre-litigation
Identify patents suitable for assertion

Determine objectives, offensive and defensive
Compare third party products with company patent claims
When asserting, analyze countersuit potential
Engage litigation counsel, subject matter and local
Analyze patent claims asserted against company products (validity, enforceability, and willfulness)

Evaluate venue, jurisdiction, declaratory judgment potential, and preliminary injunction possibilities

Consider potential damages and settlements

Check existing opinions and consider additional opinions

Identify and contact potential fact and expert witnesses

Review prosecution histories of patents potentially in suit
Evaluate potential indemnities
Evaluate potential insurance coverage

Identify potential joint defense circumstances
When sued, analyze countersuit potential against asserting party products and services, both patent and non-patent, including inside and outside of the US and through regulatory bodies such as the ITC
Analyze design around options

Analyze reexamination alternatives

Manage collection of production documents and things
Due Diligence, Acquisition, and Divestiture
Catalog target company’s IP
Evaluate target company’s offensive positions
Compare target company’s products and services with third party IP
Integrate target company’s IP processes and assets with the company’s
Identify and separate divested IP assets from company’s
Trademarks and Service Marks
Clearance services for new and proposed products
Counsel product personnel regarding mark strength and availability
File and prosecute trademark applications
Monitor worldwide databases for likely to confuse third party marks
Manage incoming and outgoing cancellation and opposition proceedings
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