What does an IP manager actually do?

In my experience, there’s often some confusion as to what an Intellectual Property (IP) manager actually does, and how they differ from conventional patent attorneys. “Are they basically just patent attorneys that don’t like working in the evenings?”. No, not really. Let’s take a closer look.

An IP manager is akin to a project manager, albeit with an IP twist. Think less of a technical or legal specialist, and more of a generalist, but with deep knowledge of your business. That means knowing who the decision makers are, what the decision flows look like, and what your commercial priorities (and limitations) are. An IP manager should feel like an extension of your business, with their goals and motivations fully aligned with yours.

The sorts of jobs an IP manager will be tasked with, on the face of it, sound similar to those that might be performed by a conventional patent attorney. For example, an IP manager will be responsible for ensuring that your valuable IP assets are protected, and that any potential liability with respect to third parties, at least in terms of IP, is properly understood.

However, the key word here is ‘manager’. This doesn’t mean dusting off an old slide deck, and saying the words “mission and vision” or “shareholder value” as often as possible.

Rather, it means, in terms of IP:

• Championing a course of action

• Setting a budget for it

• Getting buy-in from relevant stakeholders, usually non-IP people

• Defining objectives and key results

• Determining how progress will be tracked

• making sure it actually gets done, on time and within budget, and

• communicating the results in a way that allows key decision makers to take action, with minimal guff.

IP Managers versus Patent Attorneys

Fundamentally, a patent attorney’s core activities revolve around drafting patents, and / or reviewing them, be that relative to other companies' patents, or descriptions of their own or other parties’ products. Typically, the end product will be one of multiple predefined options, such as an official legal document or a letter addressed to the patent office.

For this kind of work, patent attorneys are extremely well-oiled, hyper-optimised machines. Through their work with multiple different clients, patent attorneys have a deep well of legal knowledge that can be drawn upon, for a very well defined set of legal situations, where the relevant parameters are largely already known.

Questions like, “what aspects of this complex technology are protectable?”, “how can I make sure ownership of these inventions is correctly registered at the UKIPO” and “does my product have freedom to operate in the UK and US?” are exactly the types of questions that patent attorneys are used to dealing with.

What all of these questions have in common is that they are bottom up, with the problem already having been defined, and the answer requiring some judgement within known legal boundaries. Conventional patent attorney advice tends to be reactive, rather than proactive. That is not to say that patent attorneys are lazy. Far from it. What it means is that a patent attorney will act on your explicit instructions, rather than tell you what those instructions should be and whether they make commercial sense for your business.

By contrast, an IP manager is better suited to the bigger, fuzzier, questions for which there is not necessarily a prescriptive, ‘correct’ answer. This includes questions where having deeper commercial insight may be more beneficial than having deep legal or technical expertise.

Questions like:

• Given the nature of my business, what is a sensible IP strategy?

• How much should I be spending on IP, and why?

• What should I protect, how should I protect it, and why?

• Which countries should I seek protection in, and why?

• Is my IP portfolio good value for money?

• What should my internal IP policies be?

• I want to commercialise my IP…where do I start?

...are where the IP manager has the upper hand. This is because they'll be more deeply embedded within your business, and will have greater awareness of the commercial landscape within which it operates.

The point of this post is not to bash patent attorneys. Most IP managers will have started their careers as patent attorneys, before having switched to their current role, often following a stint working in industry (i.e. 'in-house'). Rather, the point is that IP manager's ultimately serve a different purpose to conventional patent attorneys, and add value in a different way.

To get the most out of your IP, consider using a hybrid approach. Your IP manager acts as the business-facing champion, understanding your needs and goals. Meanwhile, a trusted external patent attorney handles the legal intricacies, ensuring your IP is secured effectively. This collaboration allows you to benefit from the best of both worlds, without having to sacrifice one skill set for the other.

In our next post, we'll look at when you're likely to need the help of an IP manager, and how to go about selecting one. Spoiler alert: you should pick Unnos IP ;).