21st century patent lawyers should contribute far beyond prosecution of patents

Fortune, Sept. 27, 2010 at 76, states that 3M owns 40,000 patents and patent applications, with only about a quarter of them in the US. A number that massive and scattered helps you appreciate the crucial role of inside patent lawyers.

In that vein, their role may be changing. A head of IP recently made a passionate argument for patent lawyers who don’t even prepare and prosecute applications for patents. More contributory than procurement (patent preparation and prosecution) are transactional IP advice. Having delegated the traditional function to boutique firms at fixed fees, he sees his staff’s higher value from commercial nous, such as licensing, strategic analysis of the company’s patent landscape, and guidance of R&D (See my post of May 18, 2010: at Electrolux, maximizing the value of a portfolio rather than its size.).

To determine the strategic contours of a patent portfolio presents a challenging, never-ending puzzle. It influences the profitability of the company more than drafting a patent application. So too does client counseling of what research to work on and what to avoid. Patent lawyers can be more involved with litigation than before. They set up strategic alliances and research projects. Inside patent lawyers of the world unite! You have nothing to lose but your chains of prep and prosc.

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