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The activities of in-house patent lawyers, aside from litigation

As with all in-house attorneys, patent lawyers need to be managed to help them most efficiently go about their duties. Law Department Management has accumulated quite a few posts on the range of work they do that is not adversarial (See my posts of Jan. 3, 2006: patent counsel and value delivered; July 18, 2006: 27 metrics for a patent group; April 12, 2006: total cost of IP legal services; Nov. 13, 2005: restructuring of Motorola’s patent team; April 8, 2007: Univ. of Virginia’s in-house patent attorneys; and May 14, 2006 #2: Intuit’s expansion of its resources.). After I labored to assemble this mass of posts that follow, I realized that my blog uses the word “patent” 681 times, and I had looked at each one of them.

Evaluate inventions for patentability (See my post of March 23 2008: Patent Review Committees with references cited; and Dec. 4, 2006: set patent strategy at Palm.)

Prepare and prosecute patent applications (See my posts of Sept. 27, 2005: offshore costs; Nov. 14, 2005: Motorola and Indian drafters; Oct. 10, 2005: DuPont; Dec. 7, 2007: percentage of IP work outsourced; Oct. 8, 2007: IBM’s extensive use of retired patent counsel; Feb. 4, 2007: SAP Canada’s productivity; and Feb. 10, 2007 #2: GE’s goal to boost patent applications.). To obtain patents they may competitively bid “prep and prosc” work (See my posts of May 23, 2007: fixed fees for patent applications; and March 9, 2007: Cisco.).

They may participate in giving inventors awards (See my posts of Oct. 10, 2006: Dial Corp.; Jan. 27, 2006: incentives to researchers at H-P; and July 25, 2007: Halliburton Energy.) and handle other aspects of securing patent protection (See my posts of March 23, 2007: translation costs; March 3, 2006: Six Sigma and International Truck; Dec. 11, 2007: evolutionary design and its potential effect on patent volume; Aug. 3, 2005: Microsoft and benchmarks of patents per billion of revenue).

Manage the patent portfolio (See my posts of May 13, 2007: Microsoft’s portfolio; Nov. 13, 2005: IP audits; May 1, 2005: integrating matter- and IP-management databases; Oct. 10, 2006: Avery Dennison’s database; Feb. 4, 2007: Honeywell’s IP e-billing system; Aug. 5, 2007: Hitachi’s efforts to prune; Jan. 30, 2006: customized software at RIB-X Pharmaceuticals; and April 10, 2006 # 4: Association of Patent Law Firms.).

These tasks include paying annuities and renewal fees (See my posts of Aug. 7, 2007: many international matters involve patents and trademark local counsel; April 10, 2006: total law firms retained ought to exclude local IP counsel; and Nov. 30, 2005: Computer Patent Annuities (CPA) and its services.).

License, buy or sell patents (See my posts of Oct. 19, 2005: collecting royalties; Jan. 16, 2006: Ocean Tomo auctions; and Oct. 29, 2006: Qualcomm.).

Educate clients about intellectual property and its protection (See my posts of July 10, 2007: build awareness; and May 10, 2006: Kraft’s initiatives.).

Assist with due diligence and negotiations in M&A (See my post of Jan. 3, 2006: many patents are worthless.).

Assess the competitive landscape of patents (See my posts of Dec. 11, 2007: Microsoft’s software to classify large portfolios of patents; Jan. 13, 2006: no IP department is an island.).

Track and influence to legislation and patent office regulations (See my post of Dec. 28, 2006: Community Patent Review Project.).

All aspects of the patent value chain – from invention disclosures to letting patents lapse — ought to be scrutinized for the value they create and the costs they incur (See my posts of March 21, 2006 and Jan. 13, 2006: value of US patents compared to cost to acquire; Dec. 8, 2006: data scarce on value of in-house patent counsel.). Sometimes an executive outside of the law department holds sway over these activities (See my posts of Oct. 30, 2005: Chief IP Officers; and Feb. 1, 2006: IP management groups at Avery Dennison and Honeywell.).

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