By Art MacCord

Art MacCord is a patent attorney with 40 years of experience. He keeps an eye on the U.S. Patent and Trademark Office and the U.S. Copyright Office for new rules and practice tips of interest to intellectual property attorneys. Find his latest updates here:

NCBA IPL Section Blog News Blasts For June 23, 2020

Copyright Office Issues Final Rule to Create Group Registration Option for Short Online Literary Works

https://www.copyright.gov/rulemaking/shortonline-literaryworks/?loclr=eanco

https://www.govinfo.gov/content/pkg/FR-2020-06-22/pdf/2020-12041.pdf

Copyright Office Releases Updated Online Edition of Copyright Law of the United States and Related Laws Contained in Title 17 of the United States Code

https://www.copyright.gov/title17/?loclr=eanco

By Andre Gibbs 

From time to time, I am asked by law firm colleagues how to prepare for the transition from outside counsel to in-house counsel. In many instances, these colleagues must transition from being an Intellectual Property (IP) specialist in a few areas of IP law to an IP generalist. For example, I notice that many of these colleagues have extensive experience working as a patent attorney performing specialized “prep and pros” work for submission to the USPTO, working closely with foreign counsel regarding related non-US “prep and pros” work, occasionally assisting with patent assertion and litigation matters, and even perhaps assisting with due diligence relating to a client M&A deal. At its core, this type of work relates to their specific, specialized expertise in patent law. In many cases, it is this same expertise that in-house counsel will most likely seek in a new hire (e.g., to assist with the management of a patent portfolio).

However, in many additional cases, an in-house IP attorney must also be a general IP attorney that wears many hats. They should be ready to advise on issues related to the licensing/monetization of IP, use of open source code, participation in Standards Setting Organizations, product naming, product packaging claims, copyright assertions, DMCA take down requests, Privacy issues (e.g., GDPR), IP indemnification and ownership clauses in commercial agreements, etc. These tasks are in addition to not only managing the patent portfolio, but also providing IP education sessions and performing invention harvest sessions with the organizations’ engineers or scientists. Rarely have I seen many outside IP attorneys that have had the opportunity to obtain such a broad array of IP legal experience before transitioning to in-house IP legal position.

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