Sunday, May 14, 2006

Intellectual Property for Corporate Counsel [US]

The American Corporate Counsel Association's 149-page "Introduction to Intellectual Property for In-house Counsel" is intended "to provide corporate counsel with a general overview of intellectual property and to suggest useful practices for the handling of intellectual property issues in the corporate setting." It does, in fact, give some good background on the types of intellectual property protection available in the U.S. However, since it was written by attorneys at 375-attorney U.S. law firm with offices in DC, New York, and Los Angeles, it may not entirely answer all of the questions that attorneys might have about the business of I/P in a corporate setting.
For example, with regard to hourly billing rates, the authors conclude that while the concept of hourly billing rates seems logical and appropriate as a wayof valuing legal services, in reality corporate clients often suspect that the use of thismethod of billing can lead to excessive charges as a result of the firmÂ?s use of billable hours as a basis for evaluating attorney performance. On the other hand, law firms that view themselves primarily as members of a profession whose primary obligation is to serve the legitimate interests of their clients, and who conduct themselves accordingly, are usually not subject to this criticism. This would be in keeping with Abraham Lincoln's observation that "a lawyer's time and advice are his stock in trade."Still, when considered from the point of view that such a law firm might have when looking for new clients, the report does provide some interesting perspectives.
For example, the section on "Creating a Corporate IP Protection Plan That Makes Sense from Both Legal and Business Perspectives" contains this little gem on comparative organizational behavior in the legal environment:
Unlike a law firm, where there are no rigid limitations on the number of partners and an individualÂ?s potential for increased financial and professional reward is primarily limited only by his capabilities, the corporate pyramid restricts upward mobility within a company. Hence, the corporate professional must look in greater measure to the promise of more challenging work and increased independence as a reward. Inescapably, for most corporate professionals, responsibility for litigation, licensing, and other major work is seen as reward, and the lack of it as a penalty. Guidelines for allocation of this type of work should be clear, and departures from them explained. Failure to do so is detrimental to morale. This does not materially limit managementÂ?s ability to distribute work as they see fit, but it merely places upon them the burden of explanation.In-house practitioners might not agree with how these particular private practitioners expect them to run their business. But, in the end, everyone will acknowledge that it's a good place to start when thinking about how to organize a corporate I/P department.
Rodney D. Ryder

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