IP strategists: Management consultants or lawyers?

by Andrew Watson on 4 December 2008

In keeping up with previous posts on the topic, I’ve been thinking a bit more about what IP strategists are as a profession. Are we management consultants or lawyers? Or is there a “third way”?

Patent attorneys in particular are good at achieving specific targets when given – patent widgetX or litigate widgetY, but can often be more limited when it comes to broader business issues. They went to law school, not business school. In-house counsel tends to be risk adverse and regarded (by management) as a cost of doing business rather than as a way to build on the profit-making side.

Outside counsel may lack a broad understanding of the business issues and may even have been only asked to look at a strictly defined set of tasks (and therefore operate with blinders on). Though I think that all legal professionals take seriously the “counselling” part of their legal counsel role, there often exists real practical limits on how well they can tie in the legal protection to the overall commercial strategy.

Management consultants seem to have more access to the broader internal commercial issues at companies. Often they can be seen by management as a way of building value or at least finding ways of cutting costs. Otherwise, why would you hire them in? In contrast to lawyers, this group traditionally has more of the commercial strategy aspects but less of the on-the-ground knowledge on how to protect it.

IP strategy, as a profession, means tying together the commercial strategy aspects with the practical law of intellectual property. Because of this interplay between law and business, IP strategists can structure themselves as either management consultants or as lawyers. To that end, I think that we are a hybrid – a third way of looking at the issues that tries to combine the best of both law firms and management consulting to provide practical help with intellectual property.

Perhaps given the nature of the IP strategist corner of the profession, other business structures, such a multi-disciplinary practices — lawyers and non-lawyers in partnership — may (where allowed) appear. In the end, how IP strategists provide is though less important to our clients that what we provide and whether it meets their needs.

Long term, I’d like to see this and other issues discussed among strategists, perhaps through groups such as on LinkedIn or at in-person meetings. If you’d like to participate further, please leave a comment or send me an email. I’m envisioning a few evening social meetings (in London / South East at first and then expanding) and perhaps an email list for discussions about our growing industry among the professionals serving it.

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{ 4 comments… read them below or add one }

Jackie Hutter 12.04.08 at 9:32 pm

I am an IP Strategist who meets your “third way” description above, but it is worth noting that there are legal issues that effect how I can refer to myself and characterize the what I do for my clients. I don’t know what it is like in other countries, but here in the States, I have to hold myself out as a consultant to properly address malpractice liability issues. I do not carry malpractice insurance, which is becoming increasingly expensive for those practicing patent law in the States (largely due to liability payouts for docketing errors). I do not see the need for such coverage because I am not filing patent applications, and therefore don’t make docketing errors. Instead of the standard US lawyer Engagement Letter, my clients sign a Consulting Agreement. Significantly, the agreement states that they are not engaging me as a lawyer, and I am not providing legal advice. The agreement also counsels them that they need to hire a lawyer. Nonetheless, those hiring me recognize that my 13 plus years of IP experience as a high level IP lawyer is not checked at the door when they hire me as an IP Strategist. This is semantics, of course, but unfortunately this is necessary for a lawyer doing such “non-traditional” practice in the States.
Also, as you note in the original post, a consultancy leaves open the possibility for me to partner with a non-lawyer, which would otherwise be difficult in this country. Not something I am doing now, but certainly something to think about in the future.

Jordan 12.09.08 at 4:46 pm

Hi Jackie — thanks for the comment.

I didn’t fully explore the practical issues due to space, so thanks for highlighting them. Especially in the US (as compared to the UK) issues of unauthorised practice of law (UPL) can be a problem, as well as rules on dealing with non-lawyers (and advertising, and referral fees, and so on), including malpractice insurance requirements and their rates.

Law as a profession, I think it’s fair to say, is regulated no matter where you practice. Consultants in this field will invariably have to make the decision to be regulated or not, including here in the UK. We’ve chosen to be a group of consultants rather than a regulated firm of solicitors.

But as you rightly point out, that doesn’t mean you check all your IP experience at the door!

Jane Lambert 02.18.09 at 10:07 am

There s a delicious pun and irony here. One of the character’s of Moliere’s play Le Bourgeois Gentilhomme is called Monsieur Jordain who was delighted to learn that he had always spoken but did not realize it. Likewise I have discovered through a very recent encounter with Jackie Hutter through “twitter”that I am also an IP strategist but never realized it. Not only that but members of my profession, the patent bar of England and Wales have been offering advice on IP strategy for hundreds of years. First of all we are counsel, not patent attorneys (there is a distinction here) and were until recently precluded by rules of professional etiquette from practising as patent attorneys. Our job is to advise on difficult points of law, draft complex legal instruments and represent clients (usually on the instructions of patent or trade mark attorneys or solicitors) parties before the Patents Court and Intellectual Property Office. Secondly, we have to be independent. Partnerships at the Bar are not allowed though the Legal Services Act 2007 does provide for partnerships between different types of lawyers and even different types of professionals. Thirdly, barristers may not manage clients’ funds or business. That means we have nothing to gain from their applying or not applying for a patent, trade mark or other IP right. We are often asked the efficacy of seeking particular types of IP protection. The advice that we give is always pragmatic.

JS Hatcher 02.25.09 at 1:03 pm

Thanks for the comment Jane. Lawyers, which I would include barristers, solicitors, and patent and trade mark attorneys, give counsel to their clients and don’t simply just robotically perform the legal tasks assigned to them. In the process of counseling their clients in IP, they will counsel them in the relevance and applicability of different legal solutions to the problem, and so engage in IP strategy.

So in that sense any IP lawyer that takes seriously their obligations to their clients will engage in thinking about IP strategy issues (as I mention in the post). I also think that the independence and expertise presented by barristers/advocates makes them a great (and unique) source for IP advice.

But there is an (emerging) group of people and firms (of which I would include Jackie, Duncan, our firm and others) that concentrate on IP strategy as a distinct area. In so doing they develop a level of depth on the commercial and business aspects of IP and intangibles generally. This level of expertise often (in my opinion) goes beyond what most IP lawyers offer, or at least what clients engage IP lawyers for and expect from them. It’s all about how you can provide the pragmatic advice you mentioned to serve business needs in what I would see is a separate (and growing) area of law/consulting

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