Who Manages IP in a Company?
Alt Legal Team | November 12, 2023
Intellectual property can be one of the most valuable assets that a company owns. Companies must build a reliable, experienced team to manage its IP. IP and trademark law is a very specialized area of law and requires that practitioners develop in-depth knowledge and experience. Failure to know the laws and understand deadlines can result in very costly errors and even a loss of IP rights.
Some companies handle their IP matters in-house, meaning they have a legal department staffed with attorneys and sometimes non-attorney staff to manage their IP matters. Some companies with particularly large IP portfolios may have a specialized IP legal department that handles its IP matters. The head of the department may be given a title such as Chief IP Counsel, Senior IP Counsel, IP Director, or Vice President, IP.
Alternatively, a company may engage with outside counsel to handle its IP portfolio. Sometimes it is more cost-effective to have outside counsel that specializes in IP law manage a company’s IP. Additionally, it’s important to note that even if a company has an in-house legal department, they may still choose to have an outside law firm handle litigation and IP enforcement matters.
IP Legal Department
The legal department plays a crucial role in managing IP at a company. They are responsible for identifying, protecting, and enforcing the company’s IP rights. This includes filing for trademarks, copyrights, patents, and domains, as well as enforcing IP rights and handling disputes. Additionally, the legal department will handle all transactional work related to IP, including drafting and negotiating various types of agreements and licenses, such as manufacturing agreements, sponsorship agreements, social media influencer agreements, and more.
The IP legal department works closely with other cross-organizational teams, including research and development, marketing, and the c-suite. It is important that the legal department be aware of all aspects of a company’s business plans so that they can spot potential issues and take necessary legal steps to ensure smooth business functioning.
When it comes to managing IP and particularly trademarks, the legal department will work closely with other cross-organizational teams when new products/launches are in development. As other teams develop brand names, logos, slogans, etc., the legal team will be responsible for clearing those names, logos, and slogans for use. The legal department will also be responsible for filing with the appropriate IP office (ex. USPTO, CIPO, WIPO) to protect those names, logos, and slogans.
Another key function for the IP legal department is to manage relationships and matters assigned by external parties. This includes IP prosecution, enforcement, and litigation matters being handled by outside counsel at a law firm. Additionally, the IP legal department is responsible for managing IP matters delegated to foreign counsel, including global prosecution, enforcement, and litigation. Sometimes foreign counsel may be in-house counsel at an international division of the company, and other times foreign counsel may be outside counsel at a law firm located in a foreign jurisdiction.
IP Legal Department Non-Lawyer Staff and IP Docketing
The IP legal department may be comprised of lawyers and non-lawyer staff, including trademark and/or patent paralegals, docketing specialists, and other administrators. Non-lawyer staff members may be responsible for many important tasks and are heavily involved in IP search/clearance, prosecution work, research, and drafting documents for prosecution, drafting agreements and licenses, and drafting enforcement documents.
Non-lawyer staff in the IP legal department is typically highly-involved with IP docketing. IP docketing is the process of tracking the statuses and the numerous deadlines associated with various types of IP matters, including trademarks, patents, copyright, domains, licenses, and disputes (such as TTAB disputes and litigation proceedings). IP docketing also involves knowing and understanding IP-related deadlines and being able to calculate and calendar deadlines.
IP docketing software (such as Alt Legal IP Docketing Software) is used to track the statuses and deadlines associated with IP matters. IP docketing software is a sophisticated tool, and users must understand how to use the software in order to properly keep track of matters and deadlines.
Docketing a Company’s IP Matters
All members of an IP legal department will be working with IP docketing software to some extent. It’s important that all companies have a reliable, accurate, and easy-to-use system to manage their IP matters. Learn more about what features to look for in the best, most high-tech IP and trademark docketing software.
- Trademark Docketing Software Features Checklist: Organize Your Evaluation
- Top 5 Trademark Docketing System “Must Haves”
If you have any questions about how to choose the best IP docketing software for your organization, our knowledgeable team is here to help. Reach out to us at sales@altlegal.com. Also, we would be pleased to offer you a free trial or demo of Alt Legal IP Docketing Software. To sign up, click here.