Is IP Counsel’s Job Limited to Patent Prosecution, Litigation and Maintenance only?

 In GreyB's Thought Process, Patent Commercialization

Failure stems not as a result of an action, but often as a result of inaction.

Digital Equipment Corporation, a leader in the computer market for decades does not even exist today. Why?

Because they failed to grasp the trends. Instead of continuing in the direction of progressive innovation, the then president of DEC, Mr. Ken Olsen, was skeptical of the success of desktop computers market and went as far to say- “There is no reason for any individual to have a computer in his home”, during a talk.

We all know what followed. Don’t we?

DEC is only an example and there are many others. Eastman Kodak, Border books, Blockbuster, the list goes on. One common denominator for their failure is that they did not align their businesses with the technological progress.

That gets us to this question- How could it have been avoided?

The answer is by using an IP counsel.

But how can IP counsels act to keep their companies abreast with the market trends? Isn’t their job limited to the prosecution, maintenance and monetization of the patent portfolio?

Not really.

An IP Counsel Can Help Decide What to Innovate

IP counsels have to wear multiple hats along the way; one of them is a strategist responsible for playing a role in deciding the Innovation strategy of an organization.

With changing times where every innovation needs to be protected to have a significant hold over a market, it has become paramount to have a patent strategy that is in sync with the business strategy of an organization. But more often, organizations (Read IP counsel) consider patents merely as an offensive –harsh, But true – or defensive tool and fail to leverage the futuristic insights, which can set them ahead of the competition.

Patents, as we know them, are an index to the future. Analysis of patent filing data can tell a lot about technological trends. By identifying white spaces or innovative areas that resonate with the business areas of an organization, IP counsels can help frame innovation strategy such that an organization indulges in progressive innovation while continuing to expand their portfolio in the domain they already operate in.

Patent filing data could be leveraged to find what would be the next big thing, the technologies that would rule the future and even give a glimpse of technologies that would cease in the near future. These insights, if acted upon, can give an organization the early bird’s advantage.

Patent Counsels Can Use Patent Data to Decide Where R&D Investment Should be Made

Let us take an example. Consider the below chart comparing two communication protocol technologies in embedded systems and its growth in the past 15 years. Back in 2001, Bluetooth was the de-facto standard and Zigbee was a small player. But tables turned within just 5 years and Zigbee’s growth outranked Bluetooth.

Bluetooth Zigbee

We know today’s situation where Zigbee leads the market of communication protocols for smart homes. Companies that acted on this insight and innovated pretty early reaped the fruit. One such company was Chipcon, a mixed signal and wireless chip company, which introduced CC2430, the very first Zigbee System on a chip solution, which went on to become highly successful.  Chipcon was acquired by Texas Instruments five months within the launch of CC2430 for a whopping 200M. As a result of the acquisition, Texas Instruments is regarded as one among the top vendors in home automation market.

Acting on the insights from patent filing data can prove to be highly beneficial for an organization, helping it to reach its zenith.

How Patent Counsels Can Make Business Team Come on The Same Page

In a perfect world, IP counsels can communicate these insights to business teams which would give them precious clues about the technological trends, and business teams would take actions accordingly that would decide the direction in which R&D would take place, enabling progressive innovation.

But, we don’t live in a perfect world.

It is often the case that the business teams are so engrossed in their R&D efforts that they don’t pay much heed to whatever IP counsels have to say. The claims of IP counsel often go unheard and results in a loss for the organization in the future.

How to make them listen to you?

The dominant question is – What can IP Counsel do so that the business team does not just listen to their comments, but also take business decisions accordingly?

The solution to the problem is not very complex.

It is often found that the insights submitted by the legal teams have a lot of legal jargon, which makes it difficult for business teams to leverage the data. When it comes to conveying an idea, it is always better to support them with facts in an easy-to-understand format.

For instance, consider that you work for a Multi-national organization that manufactures solar cells.

You do a study of market filing data of top competitors in the domain and analyze the number of patents they have in each country. An analysis would reveal that Germany has the least number of patents filed by any of the competitors.

You realize that getting patents in Germany would prove to be of great value.

Now, all you have to do is to communicate it to the business team so that you everything is agreed upon to get started.

How would you present this to the business team?

You could either have this conversation-


Well, you lost the attention of the business team when G filed H patents in I land!

Or you can do it this way!


When it comes to presenting insights, facts presented with visual cues are much more effective. The key is effective communication combined with solid insights presented in a visually appealing and easy-to-understand format.

 Consider for the instance that your company operates in Video games domain.

A look at the communication devices patent filing data reveals that in the last few years, there has been an increase in numbers of patents filed in head mounted display domain. Now, you can suggest the business teams to invest in developing games that are HMD-compatible in a similar manner.

This won’t just warm you up for the race in future but also help in claiming a niche spot among the top players.


On an additional note, one company that has already paid heed to this insight is Rovio, the company behind the ever famous game Angry birds. They had a great pocket version and rolled a smart watch version of the game too. Recently, they entered the HMD market by releasing a demo of its VR app.

That is just one example of timely action.

If the legal and business teams of an organization collaborate, nothing can stop them from succeeding. Success lies in unity, after all.

Dear IP Counsel, Go ahead and identify those unexplored areas that will help your organization grow.

In case you’re wondering how you can get these insights, you need to get a landscape analysis done.

Authored by: Anjali Chopra, Research Analyst in collaboration with Mahesh Maan, Senior Research Analyst, Search Team


Business Development Strategy for IP law Firms-1


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