Very often you see the words IP Manager mentioned. But what kind of person is this? What does he or she do? In this article, we will go into a little more detail about that.

In our current times, innovation, clout and creativity are central issues. Protecting intellectual property (IP) is more important than ever. Also because more and more companies are doing it. And if your competitor is doing it, you just have to keep up yourself. Companies are investing heavily in research, development, design and brand building.

But how do you ensure that all those efforts are not simply copied? And how do you leverage intellectual property strategically within an organization? That's where the IP manager comes in. IP, by the way, comes from Intellectual Property, the internationally common abbreviation.

What is a IP manager?

An IP manager, also known as an Intellectual Property Manager, is responsible for managing and strategically deploying an organization's intellectual property rights. This may include patents (patents), trademarks, designs (designs), copyrights, trade names, domain names and sometimes trade secrets. The IP manager is the link between the technical, legal and commercial departments of a company and ensures that IP rights are seamlessly aligned with the business objectives and strategy being pursued.

The purpose of the IP manager can generally be broken down into two broad tasks. The first major task is to protect the company's innovations, brands and creative expressions. So this means an active role in the company's developments. Secondly, it is also important that this protection, when obtained, is exploited in a strategic manner. This can be done, for example, through licensing to competitors or using these rights in negotiations with competitors.

So a well-versed IP manager thinks not only legally, but also commercially and strategically. And always in the interest of the company. In practice, this is sometimes at odds with independently operating, or free Patent Agents. These may or may not be employed by an organization, whose interest is the interest of the office. Therefore, it is always good to have the person of IP Manager, whether employed permanently or not, within an organization so that they can keep a tight eye on the company's interests.

Main duties of an IP manager

It is very important for an IP manager to know what is going on in the IP field in a company. He or she needs to know what projects are running and what stage they are in. The first step in this is to know what you have. The first thing an IP manager needs is an overview of all existing IP rights, if any, of an organization.

If present, this can be a combination of IP rights, the portfolio. This can then include patents applied for and patents granted. But it usually does not stop there. A somewhat more developed organization has also spent time on trademarks and designs. Of course, this also depends on the company and its activities. Domain names are also important here. These are still sometimes overlooked. Another important IP right is copyright. These sit directly, i.e. without a required registration, on software, for example, or marketing materials. These rights, as mentioned, are not registered and so it is sometimes difficult to prove ownership. The last IP right is any know-how and trade secrets. These are usually only registered internally.

Clearly, IP is not just about patents, although this is often assumed. A good inventory of all rights helps in planning future applications as well as risk management.

Developing IP strategy

An important part of an IP manager's role is to develop an IP strategy that fits with a company's overall strategy. Also important here is what stage the company is in. For smaller companies, such as start-ups or med-techs, they often focus on broad patent protection to attract investors. These often want collateral in the form of patent rights in exchange for the investment. For larger companies, a focus on trademark protection and enforcement of trademark rights is often added, but again this depends on the type of company. Finally, there are the multinational companies that often have complex portfolios with defensive and offensive strategies on all IP rights.

The IP manager decides, often in conjunction with management and the R&D manager, when and where to seek protection, and which rights offer the most value to them.

Coordinating applications

The IP Manager is not always a patent or trademark attorney himself, but always works closely with them. Of course, it is preferable that the IP Manager also has these qualifications. This makes communication better and easier. The IP Manager makes sure that the (technical) information is provided in time for patent applications and that a proper prior art research has also been done. This is something that outside Patent Attorneys still sometimes want to skip. But this is an essential part of the IP Manager's duties.

Furthermore, he or she also ensures that trademarks are applied for and managed at the right time. Deadlines must also be monitored properly, such as for maintenance or renewal. This can be done internally or externally. In general, all pending applications must be coordinated and individual rights properly managed. Again, of course, experience pays off. An IP Manager with a broad background in IP as well as technology is always a big plus for a company in this regard.

Portfolio Management

An IP portfolio with multiple rights needs proper management. This is essential. That means weighing the costs and benefits well: are certain rights still strategically relevant? Here, too, the input of the IP Manager is very important. Deciding on dropping IP rights cannot actually be taken by an external person because they are never fully aware of the business dynamics.

Therefore, it is important to regularly evaluate the rights of the portfolio, such as coverage by country or product line. And of course, this also has a lot to do with managing the budget of the portfolio. After all, IP costs can add up rather quickly. In large companies, the IP manager sometimes manages portfolios of hundreds or thousands of IP rights around the world.

Licenses and cooperation agreements

The IP manager also plays a role in negotiating a number of issues. This is usually done in consultation with the legal department. This may involve, for example, licensing agreements (both in-licensing and out-licensing), R&D collaborations with universities or other companies, the clauses in non-disclosure agreements (NDAs). He or she is also involved in the transfer of IP rights. But as mentioned above, it is also important that this is done in consultation with the legal department.

Infringement and enforcement

If a competitor infringes your trademark or patent, it is often the IP manager who signals or coordinates this, either directly or not, for example through the sales department. Here it is important to keep a close eye on the portfolios of others, as well as market developments. This includes monitoring competitors. Then when things really go wrong, which you usually try to avoid, it starts with sending summons letters. And then it is important to work well with lawyers any lawsuits or the legal department to resolve it among themselves. The latter, of course, is always preferable.

It is therefore always a matter of strategically weighing up whether enforcement pays or not. And of course, the IP manager must also verify that the company itself is not violating the IP rights of others through regular infringement analysis (also known by the erroneous name of “freedom to operate” or “FTO analysis”).

Awareness and internal training

In an organization, it is important that employees know how important IP is to a company. An IP manager ensures awareness, or its expansion, by providing training to R&D, marketing and sales departments. This might include establishing guidelines on how to handle confidential information, educating colleagues on the importance of timely IP requests and implementing procedures for idea identification. The more easily accessible this is set up, the more effective these policies will be.

What kind of background does an IP manager have?

IP managers often have a multidisciplinary background. They are usually people with experience or training in engineering or science (e.g., mechanical engineering, biotechnology, chemistry), in law, particularly IP law, or business administration or innovation management

Many IP managers are, for example, patent or trademark attorneys, lawyers with an affinity for technology, or R&D managers with a strong legal interest. An IP manager need not always be an attorney, although this is preferred, but he or she must know when specialist legal advice is needed and arrange it in a timely manner.

Where do IP managers work?

IP managers are encountered in different types of organizations. But the most important is the manufacturing industry: large technology companies, pharmaceuticals and chemical companies. These can also carry large consumer brands. companies with strong brands and a focus on design.

Start-ups and scale-ups often work with an external IP advisor because they have a great need for internal coordination. Universities and knowledge institutions are also often institutions large enough to need to manage a portfolio. They usually work under the name “Technology Transfer Officer.”

In larger companies, the IP manager is often part of a broader legal or R&D department. Sometimes there is a whole separate IP team that manages the entire portfolio of rights.

What makes a good IP manager?

A good IP manager combines legal knowledge with business acumen and communication skills. Essential qualities here are great analytical ability to properly assess which IP has value. Planning and organizing projects is also important because IP projects are often long and complex.

The IP manager is also a good communicator par excellence; he or she must be able to build bridges between R&D, marketing, the legal department and management. It is also important to act proactively to identify opportunities and risks. But above all, it is important to think commercially in order to use IP as a strategic tool.

Finally, why is the role of an IP manager important?

Without a good IP strategy, your company runs the risk of having copies of your product without legal protection as well as conflicts with the existing rights of others. An IP Manager looks at the costs of IP applications and the expected benefits. He also looks at opportunities for obtaining or granting licenses or for other ways of cooperation.

An IP manager ensures that intellectual property becomes a full part of business strategy. Not only as a means of defense, but also as an asset in growth and innovation.

The IP manager is pivotal in effectively managing and leveraging intellectual property. A function at the intersection of law, technology and business. This makes the position essential for any innovative company.

Intern IP-beheer

Since patent agency Custos IPC firmly believes in the importance of IP management and because we want to make our IP knowledge accessible to as many innovative companies as possible, we have even devised a special form of cooperation for it: in-house IP management. Our in-house IP management collaboration is characterized by the physical presence of one of our IP experts. As IP manager on location, the patent attorney acts as a sparring partner for the management. By regularly and structurally discussing current innovations, the associated roadmap, possible business cases, investments and the existing patent portfolio, you keep a grip on the strategy and are able to make conscious choices in the field of Intellectual Property.