The Role Of An IP Professional

Intellectual assets are created when the thought processes of the human mind are converted into material form, either by reproducing them in writing or recording them orally or digitally. Intellectual assets which can be protected by law are termed Intellectual property (IP). Thus all forms of intellectual property are intellectual assets, but all intellectual assets are not intellectual property. Again intellectual property can be classified as ‘statutory’ intellectual property such as Patents, Trade Marks, Copyrights, Industrial Designs, Plant varieties, topographies of printed circuits, geographical Indications and ‘non statutory’ such as trade secrets, confidential information, trade dress, the equitable right to prevent ‘passing off’.

What is an IP professional?

An IP professional is a person who firstly is able to recognize intellectual assets, is able to differentiate between an intellectual asset and intellectual property, and is able to classify an identified intellectual property into its various forms. Secondly, once an intellectual property is identified, the IP professional, such as the Patent Attorney or Patent Agent or the Trademark Attorney or Trade Mark Agent is able to provide cost effective solutions to fortify the intellectual property to the fullest extent possible. Thirdly, once intellectual property rights are obtained the IP professional, typically an IP manager, optimally manages these rights by timely renewals, periodic audits, being alert about breaches, extending the rights to other countries and products or services. Fourthly, in the event of a breach of these rights which may be in the form of infringement, piracy, counterfeiting, passing off or violation of the terms of an agreement, again an IP professional, typically an IP litigator - is able to advise the intellectual property right holder on the best possible solution not only to seal the breach but also to prevent its recurrence in the future. Another class of IP professionals are involved in IP transfers. These professionals generally lawyers help in negotiating and preparing the documents needed for the assignment or license of IP rights from one person to another often from one country to another. The IP professionals are also responsible for supervising due diligence of the IPRs being transferred. Finally for identifying new technology and progress of an organization, again an IP professional such as a Patent Analyst or an IP researcher is able to conduct searches in these areas, map the search results and provide danger free unhindered routes for future growth. Therefore, IP professionals assume several roles in the furtherance of the commercial and technological progress of an organization. It will be appropriate now to examine the qualifications, skill sets, functions and responsibilities of IP professionals in each of these roles.

At one end of the scale we have the Analysts and Researchers. These professionals fall in two distinct verticals: the legal and the technical. In the legal vertical the IP analyst and researcher analyzes and researches IP case laws and precedents to identify specific issues in legal proceedings. For instance, in the field of Patents, specific legal issues relating to patentability and inventive step with respect to particular jurisdictions like the USA or Europe or India may be required to be researched or analyzed in a specific case. Again the exact interpretation of the sections of the Law in specific jurisdictions may be needed so as to be able to manufacture, export or import a product. Legal researchers are generally lawyers and part of Legal processes Outsourcing firms [LPO] On the other hand technical research and analysis involves study of patent and non patent literature to determine where an organization faces infringement, where modifications or adjustments in technology may be needed to avoid infringement. The technical researcher is generally an engineer or post graduate in the field being researched or analyzed. In both cases the analyst and researcher is also equipped with knowledge domain, knowledge of internet databases and of the tools for searching and mapping generally as part of a KPO. i.e. a knowledge process outsourcing firm.