Previously I discussed the business case for engaging outsourced in-house counsel when a company is facing legal challenges related to standard essential patent (SEP) assertions and in the context of trade secret services. In this article I discuss how outsourced in-house counsel can provide significant value-add when engaging outside litigation counsel. Where a company does not have in-house counsel, or where in-house counsel is not familiar with a specialized area like Intellectual Property (IP) litigation, outsourced, in-house counsel can both help the company engage the best outside counsel and manage them more effectively.
Previously I discussed the business case for engaging outsourced in-house counsel when a company is facing legal challenges related to standard essential patent (SEP) assertions, in the context of trade secret services, and when engaging outside litigation counsel. In this article I discuss a slightly counter-intuitive use for outsourced in-house counsel: intellectual property (IP) department creation. Read more
Owners of intellectual property are often rightfully curious as to the value of their IP. Anyone who has tried to assign a value to patents outside of a litigation context and in the absence of robust licensing market for similar patents knows very well how challenging it is. Figuring out the value of trade secrets, on the other hand, is not (always) as hard. This is because what most trade secrets “are” on an ontological level are more readily ascertainable that patents. What is in the bills of materials; who are on the customer list; the process for connecting the machinery; the history and results of failed experiments; and last year’s profit margins are all knowable by a company in a way that the scope of a patent is not. Because of this fact, it is much easier for a company to correlate a particular trade secret to the value-add that the trade secret brings to the company’s business. Moreover, whether a trade secret is in fact a protectable right is much more in the hands of the rights-owner that a patent. Patents, globally, have a high invalidation rate from third party prior art, whereas whether trade secrets are generally invalidated only when the owner did adequately protect the trade secret as a secret.
What is a trade secret audit and why get one? At first blush an audit sounds expensive, distracting and unnecessary. Let’s face it, we live in the age of the long tail. Over the past few years, things people would have given a remote chance of coming to pass seem to be happening on a regular basis. What’s more, the pace of change and disruption in business and in the personal world is so great, it is almost impossible to keep up. It seems that whatever you are doing today will have to be radically altered very soon. With all this change most of us are running just to stay in place – so any distraction from the daily chores of simply keeping up needs a powerful justification. I would argue however, that the frenetic pace of business life is precisely why audits are so important. Just as mindfulness is rightly understood as being key to a centered life, trade secret audits are essential to continued success as a business.
I just posted a new article on LinkedIn: https://www.linkedin.com/pulse/outsourcing-in-house-counsel-case-litigation-management-david-l-cohen/?published=t
A summary with extensive footnotes – including many hard to get-ahold-of materials from around the world – of Vringo’s 3 year global battle with ZTE https://www.linkedin.com/pulse/short-history-vringos-battle-zte-david-l-cohen/
My paper from the AIPLA quarterly conference – very relevant to the thinking behind Vringo’s litigations with ZTE – https://www.linkedin.com/pulse/licensing-standard-essential-patents-frand-terms-david-l-cohen/
Check out my new article on LinkedIn: https://www.linkedin.com/pulse/outsourcing-in-house-counsel-case-trade-secret-services-david-l-cohen/