Introduction

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). Therefore all forms of intellectual property are intellectual assets, but all intellectual assets are not intellectual property. Once 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 stop ‘passing off’.

What is an IP expert?

An IP expert is a individual 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 different forms. Secondly, as soon as an intellectual property is identified, the IP skilled, such as the Patent Attorney or Patent Agent or the Trademark Attorney or Trade Mark Agent is able to supply price successful solutions to fortify the intellectual property to the fullest extent probable. Thirdly, as soon as intellectual property rights are obtained the IP skilled, typically an IP manager, optimally manages these rights by timely renewals, periodic audits, becoming alert about breaches, extending the rights to other countries and goods or services. Fourthly, in the event of a breach of these rights which could be in the form of infringement, piracy, counterfeiting, passing off or violation of the terms of an agreement, again an IP expert, usually an IP litigator – is able to advise the intellectual property appropriate holder on the greatest achievable remedy not only to seal the breach but also to prevent its recurrence in the future. Yet another class of IP professionals are involved in IP transfers. These professionals usually lawyers help in negotiating and preparing the documents required for the assignment or license of IP rights from one person to an additional frequently from one country to an additional. The IP professionals are also responsible for supervising due diligence of the IPRs being transferred. Lastly for identifying new technologies and progress of an organization, again an IP expert such as a Patent Analyst or an IP researcher is able to conduct searches in these areas, map the search outcomes and provide danger free of charge unhindered routes for future growth. Consequently, IP experts assume several roles in the furtherance of the commercial and technological progress of an organization. It will be suitable now to examine the qualifications, skill sets, functions and responsibilities of IP specialists in each of these roles.

At 1 end of the scale we have the Analysts and Researchers. These specialists 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 certain issues in legal proceedings. For instance, in the field of Patents, distinct legal problems relating to patentability and inventive step with respect to certain jurisdictions like the USA or Europe or India might be needed to be researched or analyzed in a distinct case. Once again the precise interpretation of the sections of the Law in particular jurisdictions may be required so as to be able to manufacture, export or import a item. Legal researchers are normally lawyers and component of Legal processes Outsourcing firms [LPO] On the other hand technical research and analysis involves study of patent and non patent literature to figure out where an organization faces infringement, where modifications or adjustments in technology might be required to prevent infringement. The technical researcher is normally an engineer or post graduate in the field being researched or analyzed. In both cases the analyst and researcher is also equipped with information domain, knowledge of net databases and of the tools for searching and mapping generally as component of a KPO. i.e. a understanding method outsourcing firm.

The next IP expert is the IP prosecutor, normally a Patent or a Trade Mark Agent. These specialists are typically referred to as IP Attorneys or Trade Marks and Patent Attorneys. These specialists assist enterprises in identifying their IPs, in consultation with in home IP managers, preparing the documentation required for obtaining and securing the Intellectual property appropriate and prosecuting the application by way of the maze of administrative and bureaucratic rules and regulations set up by every country for the grant of these IPRs. In the field of Patents the IP professional is expected to have expertise and qualification in the Patent system of the country in which he practises at the very same time he/she is required to be technically qualified in the field to which an invention relates. The patent specification which leads to the grant of the Patent needs professional techno-legal abilities so that the rights which are granted are sturdy and properly fortified and can withstand the onslaughts of the marketplace location. In countries, such as India, the IP prosecutor also needs to have argumentative abilities to argue proceedings prior to the IP office. In the field of Trade Marks, the IP expert such as the Trade Mark Agent, is a person qualified under the Act of the Country and requirements to have simple skills to identify protectable trade marks, classify the trade marks to be protected into proper classes and argue matters before the IP office of the country. The IP prosecutor may or might not be a lawyer, but he also normally directs the work of the IP analyst and researcher assists the IP litigator in counselling and opinion work.

Finally at the other end of the scale is the IP Manager. The IP manager is a corporate assignment and consequently the IP manager is typically attached to one enterprise or a group of enterprises, even though lately a couple of independent IP management firms have set up shop. The in home IP manager acts as an interface between the enterprise management and the other IP specialists in connection with the IP of the enterprise. On the other hand the independent IP management firms involve themselves with tasks such as IP brokering, [bringing together IP owners and investors], IP Audit, due diligence of the value and validity of the IP which is sought to be transferred. The IP manager usually has some qualification or expertise in management administration, usually marketing or finance in addition to legal qualifications [which are optional].

The high profile IP skilled is the IP litigator involved in trial function by way of various tiers of the Courts in the Country. The IP litigator prepares case papers and arguments either in support of the IP holder or in the defence of a Patent, trade mark, design or copyright infringement. The litigation may possibly be in the nature of a civil suit or a criminal case and it may be involve the original trial or the appeal. The IP litigator is normally a properly experienced lawyer and often is portion of a team of lawyers. The IP litigator need to have in depth understanding of the rules of procedure of the court in which the litigation is proceeding and have persuasive abilities of argument and cross examination. The IP litigator is supported by both the IP prosecutor and the IP analyst and researcher.

Copyright Assignment