in-house counsel patents

Ten Things: Creating an In-House Patent Program

I was looking back on my past blogs recently and I realized that it has been a while since I discussed issues related to intellectual property (“IP”).  This week, I’ll try to remedy that oversight.  For just about any company, IP is an important part of its assets be it trademarks, trade secrets, copyrights, or this week’s topic, patents.  Most of my in-house career has been spent with technology companies (or working with divisions of those companies focusing on technology).  Everything I know about the topic I picked up along the way.  I am not a computer science graduate, nor did I study IP issues during law school.  And I handled a few minor IP-related issues at my first law firm.  It really wasn’t until I became the General Counsel at Travelocity that I had my initial experiences with patents.  First, as the victim of the initial wave of “patent troll” cases.  Second, when by default I became the leader of our patent harvesting committee.  It wasn’t much of a program to start with but I decided to dig in and learn as much I could about patents and why it was important that we, as a company, tried to develop them.  It actually turned out to be a lot of fun, especially getting to interact with our software engineers and other super smart people who were developing the next wave of company technology.  Our patent program got better and more refined over time and the USPTO issued a number of patents to Travelocity.   I was never one of the inventors on any of our patents but I like to think the legal department played a critical role in developing those patents.  In my new job, I realize that we have a similar opportunity to build our program and enhance how we develop patents.  So, for this edition of “Ten Things,” I am reaching back to my past to lay out the key points in developing an in-house patent program.  I am going to assume you don’t know a whole lot about patents and (to keep things simple) I will focus on the US patent system – but the principles below work in just about any country: