Using IP for competitive intelligence

More and more in-house counsel and general practitioners are seeing competitive intelligence on intellectual property (IP) added to their responsibilities.

At the Association of Corporate Counsel’s (ACC) 2008 Annual Meeting in Seattle last week, West sponsored a session on intellectual property and competitive intelligence. More than 75 people attended the panel discussion at the Washington State Convention Center.

The panel, moderated by Susanna McDonald, associate corporate counsel of the ACC, also featured Steven Gardner, partner, Kilpatrick Stockton LLP, Winston-Salem, NC; Eric Ho, patent counsel, Qualcomm Inc., San Diego; and Mark Medice, national brand manager, West.

(Left to right: McDonald, Medice, Ho, and Gardner)

“It’s critical that corporate counsel with new IP-related responsibilities understand how to stay on top of the latest IP filings of competitors,” said Medice. “In-house counsel also should understand the country rules and related IP lawsuits, how to make the link between IP filings and related dockets, and how to perform an IP portfolio analysis.”

During the session, Medice talked about IP evolving as an asset, and the importance of integrating intelligence sources into a business process. “Intellectual property is a legal right but also a business asset,” Medice said. “The understanding of asset creation strategies, litigation risks and deal opportunities is important to best manage proactive and defensive positions.”

“Effectively managing a global IP portfolio is a complicated task,” said Bennetta Trahan, director of Product Management for DataCert, after the session. “Being able to discuss the strategies and technologies used to accomplish this was especially enlightening.”

Attorney Jeffrey H. Hornstein agreed. “The information was helpful and it illustrated how to protect a company’s valuable property assets,” he said.

West offers in-house and patent counsel many helpful tools to support using IP for competitive intelligence, including Westlaw Patent Practitioner, IP Monitor and Delphion. There are a host of ways these products allow attorneys to use IP information to meet competitive intelligence gathering needs, including to track patent applications or licensing by specific competitor companies, to research specific technology areas for a “build or buy” decision or to view specific technology areas to identify emerging competitors.

For more information on the West products, contact a West Reference Attorney at 1-888-472-8287.

The ACC is the leading international organization for in-house counsel. Its 2008 Annual Meeting included more than 100 continuing legal education (CLE) programs, as well as networking opportunities and exhibits from sponsors.

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