Intellectual property lawyers create all sorts of fuss and bother in law departments because their skills and experience spill over into other practice areas (See my posts of Aug. 5, 2007 about Hitachi and its IP function; and March 28, 2006 on PPG’s.). Each overlap has the potential to cause tension, unclear roles, and inconsistencies (See my post of Jan. 13, 2006 with its statement that no IP department is an island.).
One flashpoint is responsibility over IP litigation. Which group of lawyers should have what responsibilities when there is a patent infringement suit? The most common rapprochement is for litigators to run the case, while patent lawyers shed light on the technology, reexaminations and Markman hearings, and the amount of the settlement.
Another divide is between commercial lawyers and IP lawyers over who has primary responsibility for IP licensing (See my posts of Jan. 3, 2006 on patent counsel and their value delivered; July 18, 2006 on three metrics for IP licensing; April 8, 2007 on the UVa licensing office; and March 28, 2006 on PPG’s separate groups.). Business unit lawyers usually do most of the drafting and negotiating, calling on their IP brethren for technical support and due diligence (See my posts of Jan. 13, 2006 on sharing licensing fees with business units; Jan. 3, 2006 about Navigation Technologies; Jan. 4, 2006 on Microsoft and document assembly for licenses; Nov. 7, 2007 and Red Hat; and Nov. 28, 2005 regarding transfer revenue from IP.).
A third friction arises between M&A lawyers and IP lawyers when an acquisition requires due diligence.
No crisp lines of responsibility can be drawn in these situations because real-life legal tasks require both skill sets. General counsel need to set as clear guidelines as they can but recognize the inherent intractability of the tension.