What does a CIPO do?
The importance of intellectual property in enhancing enterprise and shareholder value cannot be over-emphasized. A study shows that IP represents 90% of the enterprise value of Global 2000 companies. A study by the OECD estimates that global licensing revenue will reach $500 billion in the next decade. Despite the tremendous value that IP delivers to corporations, most companies do not have one individual dedicated to developing and managing their IP strategy. A CIPO is the management team member responsible for the company’s Intellectual Property strategy, policy and practices.
The CIPO has full responsibility for all aspects of the management of the IP portfolio inside a company. He/she sits in early when M&A is being discussed, when tax plans related to intangible assets are being put together, when corporate finance related to IP is an issue. And the CIPO has the ability to make or break deals and strategies in all IP and R&D-IP related areas. In short, their yes or no has an impact on the direction a company decides to take if the company’s IP is an issue in any way.
What skills are required?
A CIPO has the ability to supervise outside counsel efficiently and effectively and provide cost effective management of outside legal services, has a professional ability to interpret laws, regulations, cases and corporate policies and is excellent verbal and written communication. He can communicate efficiently and effectively with individuals at various levels within and outside the company. He is able to advise engineering and management on general patent and innovation matters. He coordinates patent prosecution reviews with outside counsel and engineering/product line management , he co-chairs the company Patent Review Committee and supervises the Invention Disclosure Review Process. He also conducts initial Freedom-to-Practice (“clearance”) opinions and is leading enforcement processes or investigations of company patents against competitor products, drafts threat/offer-to-license notices and negotiates with infringers and potential licensees.