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Why IP Counsel

Seasoned Intellectual Property counsel provide the following critical services:

  1. Interacting with senior management to understand the markets in which the company is active or plans to become active.

  2. Maintaining an awareness of the Intellectual Property environment of the company’s current and potential markets (eg. active litigation, patent application, Intellectual Property activity of competitors or potential competitors, market niches in which patent protected monopolies may be establish by the company or its competitors).

  3. Developing and implementing Intellectual Property strategies and procedures which are appropriate to strategic focus of the company (eg., invention disclosure programs, trade secret procedures, clearance searches before major capital and/or marketing investments in new products or market niches, etc.).

  4. Making decisions as to which Intellectual Property related activities to refer to outside counsel.

  5. Managing service providers involved in activities to implement strategies (eg. patent prosecution, patent litigation, performance of clearance searches and infringement/non-infringement opinions).

  6. Performing due diligence as to Intellectual Property licensing opportunities and/or positions of potential acquisitions or investment opportunities (eg. Intellectual Property licenses offered to company, etc.).

  7. Managing the costs of Intellectual Property services.

  8. Maintaining contacts with an international network of Intellectual Property service providers.

Historical Approach

Historically, enterprises needing these services relied on either in-house patent counsel, or medium-sized patent and trademark “boutiques”.  These boutiques were typically “full service” patent and trademark practices which also provided prosecution and litigation services to large, medium and small sized corporations.  These patent and trademark boutiques tended to be relatively small (eg. thirty or fewer attorneys) with relatively low overhead compared to the larger general practice firms.  Nevertheless, many of these firms had national practices and long traditions (50-100 years) of providing top quality legal services in the Intellectual Property field.  Some of these firms received a substantial part of their work as referrals from general practice firms.

Unfortunately, over the past ten years, a large number of these boutiques have disappeared.  Many have been absorbed by large, rapidly expanding general practice firms.  Those that remained have suffered due to the discontinuance of referral work from general practice firms which have established their own patent departments.  In fact, a significant number of the remaining patent and trademark boutiques have ceased operation, or consolidated into large national “super boutiques” of over 100 attorneys.  These “super boutiques” tend to have similar overhead structures to that of large national and regional general practice firms. 

As a result of these developments, clients without inside patent counsel have experienced difficulties in obtaining independent senior level patent counseling.  These clients tend to fall into two groupings:  

  1. Small to medium companies in high technology industries which have not reached the size necessary for full time inside senior patent counsel: and

  2. Larger enterprises in industries which, in the past, have not employed inside patent counsel but are now increasingly impacted by changes in the Intellectual Property environment in their industries (eg. Financial Services).  

Thanks to Goldman IP Law, these companies can now benefit from Our Approach.


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