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A press release from a company called Outside GC announces a new service to clients called Patent GC. The idea, it explains, is to "partner-only patent counsel at rates that are dramatically lower than traditional patent firms while providing best-in-class service". Tat service will be provided by "patent lawyers with significant in-house experience who have practiced law for
at least ten years". They will offer not just patent prosecution services, but also "on-demand in-house IP counsel services". The release goes on: "In this role, Patent GC attorneys will be available to chair IP committees, manage IP litigation, and perform other functions traditionally handled by in-house IP attorneys. Patent GC will also offer due diligence support for M&A transactions and for post-transaction integration."
It's an interesting idea and one that could well catch on. If you are an American SME and do not have the funds to support a full-time in-house IP function, but need one nevertheless, it could be very tempting to call in specialist help from people who have done the job and do not charge the fees that private practce law firms would charge. Says Jonathan Levitt, the principal of Outside GC:
We believe that attorneys with experience as in-house IP counsel possess a much better ability to translate business goals into IP strategy ... Patent GC attorneys are all lawyers who have had to manage budgets, make strategic decisions about patent portfolios and work with technology development teams as well as the business teams and investors at fast-paced operating companies. We believe their in-house experience makes Patent GC attorneys uniquely capable of providing business-oriented legal advice in a way traditional law firm lawyers simply cannot.
It seems to me, though, that maybe it is not only legally-based IP advice that many companies actually need. It is interesting that Levitt does not mention value creation, neither is it talked about anywhere in the press release or on the Patent GC website. Of course, lawyers with experience of working in in-house patent departments will understand all about the traditional ways in which patents and other forms of IP are managed, and they will have certain ways of looking at these things. But if you want to go beyond the idea of IP as a cost centre with a bit of monetisaiton thrown in if you are lucky - the model that, if the press release and the website are to be believed, Patent GC is focused on - you need to have people that are going to have a much more rounded view of what IP can and can't do. Of course, such people can be lawyers; but they can also come from elsewhere - and in many cases, perhaps they actually should.
IP management, Patents, IP business
Nothing new here. Any client that doesn't already have a best-friend relationship with their outside counsel needs a new counsel.
Interesting point you make though. When will we see the first multi-disciplinary IP consultancy comprising not only lawyers and technologists, but business development and sales specialists? Trademark franchising and character licensing have had similar setups for ages.Tom Grek, Rouse Legal on 13 Oct 2009 @ 07:02
Interesting point that Tom makes in his last paragraph - such a company exists and i work for it. We were set up specifically to integrate the various disciplines that mention as we believ that this holistic approach brings greater benefit to our clients.Maurice Alphandary, Coller IP Management on 14 Oct 2009 @ 10:58
This is an interesting development and it is new. It's about bringing big company IP expertise to the SME sector, something that is not/cannot be provided by most private practice attorneys no matter how they behave or how friendly they are. They simply do not have the expertise to do this. They are also not motivated to do so due to their business model.
You make an interesting point about “value creation”, but I think you will find that these people have real practical rather than theoretical expertise in creating IP related value. They come from the world of budgets and commercial advantage through IP acquisition. The key deliverable is the advice on what action to take given the issue, based on commercial considerations. Many in-house IP specialists do go through the value creation assessment as a routine part of their job. It’s part of their remit usually. That is not the case with outside counsel.
I think you will find that this organization is providing very little legal advice when they provide their service. That’s what you get from outside counsel at a cost. Outside counsel would say “So you have an invention! Great you can file a patent lets go ahead, sorry I can’t help you with value!” Inside counsel would say: “So you have an invention! Well that’s great but the last thing you should do is file a patent application, let’s work out if we should!” You create value through the approach.
Patent GC is a start and this sort of model is the future IMHO. In my view this and other developments sound the death knell for traditional firms who will end up providing commoditized IP services to their clients.....which will be Patent GC and their ilk or low value outsourced corporate work.Nicholas White, Tangible IP on 14 Oct 2009 @ 12:34
This is, indeed, an intriguing idea that could in some ways change the tenor of patent litigation and enforcement.
http://www.GeneralPatent.comGena Mason, General Patent on 19 Oct 2009 @ 00:56