I read a great blog post at iam magazine’s website http://www.iam-magazine.com/Blog/Detail.aspx?g=9c7731ab-82c3-46fe-968e-7182b56d5fe8.  The post is titled It’s Time to Choose What You Want to be… and highlights comments made by Mr. Ruud Peters, Chief Intellectual Property Officer of Philips Intellectual Property & Standards at the CIP Forum held last month.   Until reading that blog post, I had never heard of the CIP Forum so I wasn’t in Sweden to enjoy the lively discussion of the world’s top thought-leaders advancing   ‘the understanding of, and need for, modern business models, skills, and tools required to create value from intellectual assets, property and capital for the combined benefit of industry, academia and society.” (From the CIP Forum website at http://www.cipforum.org/information/organizers-and-history/how-we-work)  I wish I had been there.

Mr. Peters talked about the need to expand the role of in-house IP professionals.

“…corporate IP professionals are left with one of two choices. If they want, they can continue to operate in the way they have traditionally done. That is with a back office role, securing IP and then managing the portfolio, while other parts of the company develop the strategy and decide how the IP is to be used. In other words: essentially acting as an in-house law firm.  Alternatively, they can move up the ladder, get involved with wider intellectual asset management issues and put themselves at the heart of the strategising. This is what Peters does at Philips; but, he explained, it is not something that just happens – it is a role you have to create for yourself.” (Emphasis added.)

Mr. Peters’ first choice isn’t really a choice. It’s the current model in most corporate intellectual property departments, and it’s not really hard to figure out why.  Most in-house lawyers are trained in and have only worked at law firms.  What do most firms train their patent attorneys to do?  Secure IP and manage the portfolio while ignoring the bigger picture like strategy.  Therefore, it’s not surprising that they set up a de facto law firm inside the company.  In my experience, this type of lawyer just doesn’t understand that there’s a different way to be.

What about Mr. Peters’ alternative, putting the in-house lawyer “at the heart of strategising”?  This is definitely the road less traveled.  I love the idea of the in-house IP lawyer being a fully integrated part of the corporate fabric, interacting with the various departments across the company to leverage intellectual assets.  But how do in-house IP lawyers create this role for themselves?

Over the next few blog posts, I will be exploring ways in which in-house IP counsel can break out of the limiting, business as usual model and embrace the alternative.  In the meantime, to all of the in-house attorneys out there, which option have you chosen?  What role do you play in your organization?

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