Intellectual property consultant

Intellectual property consultants provide advice on the usage of intellectual property assests such as patents, copyrights, and trademarks. They help clients to value, in monetary terms, intellectual property portfolios, to follow adequate legal procedures for protecting of such property, and to perform patent brokerage activities.

Intellectual property consultants typically do the following duties:

• Perform patent searches and investigate competitor technology
• Conduct patent clearance investigations
• Develop knowledge of business unit patent and trademark portfolios
• Develop knowledge of competitor IP
• Help maintain patent marking websites
• In coordination with company personnel and outside counsel, develop a strategy to grow the patent portfolio
• Review competitor patents and classify them
• Review work performed by outside counsel
• Draft patent applications and office action responses
• Interact with inventors and coordinate invention disclosures
• Review and draft license agreements, non-disclosure agreements, and other contracts
• Provide support for IP litigation
• Conduct trademark searches and provide input on trademark filings

The following job titles also refer to intellectual property consultant:

IP consultant
IP expert
patent broker
intellectual property expert
intellectual property specialist
intellectual property adviser
IP adviser
patent agent
information broker
intellectual properties consultant
patent adviser
IP broker
IP specialist
intellectual property broker
patent consultant
patent specialist
patent expert

A bachelor’s degree is generally the minimum required to work as an intellectual property consultant. The discipline depends on the type of intellectual property. For example, a degree in engineering is appropriate for technical patents.

ISCO skill level is defined as a function of the complexity and range of tasks and duties to be performed in an occupation. It is measured on a scale from 1 to 4, with 1 the lowest level and 4 the highest, by considering:

• the nature of the work performed in an occupation in relation to the characteristic tasks and duties
• the level of formal education required for competent performance of the tasks and duties involved and
• the amount of informal on-the-job training and/or previous experience in a related occupation required for competent performance of these tasks and duties.

Intellectual property consultant is a Skill level 3 occupation.

These occupations, although different, require a lot of knowledge and skills similar to intellectual property consultant.

consumer rights advisor
case administrator
court enforcement officer
legal administrative assistant
legal assistant

These occupations require some skills and knowledge of intellectual property consultant. They also require other skills and knowledge, but at a higher ISCO skill level, meaning these occupations are accessible from a position of intellectual property consultant with a significant experience and/or extensive training.

patent engineer
legal consultant
prosecutor
mediator
court jury coordinator

This knowledge should be acquired through learning to fulfill the role of intellectual property consultant.

• Intellectual property law: The regulations that govern the set of rights protecting products of the intellect from unlawful infringement.
• Contract law: The field of legal principles that govern written agreements between parties concerning the exchange of goods or services, including contractual obligations and termination.
• Market research: The processes, techniques, and purposes comprised in the first step for developing marketing strategies such as the collection of information about customers and the definition of segments and targets.
• Legal terminology: The special terms and phrases used in the field of law.
• Scientific research methodology: The theoretical methodology used in scientific research involving doing background research, constructing an hypothesis, testing it, analysing data and concluding the results.

These skills are necessary for the role of intellectual property consultant.

• Protect client interests: Protect the interests and needs of a client by taking necessary actions, and researching all possibilities, to ensure that the client obtains their favoured outcome.
• Present arguments persuasively: Present arguments during a negotiation or debate, or in written form, in a persuasive manner in order to obtain the most support for the case the speaker or writer represents.
• Monitor legislation developments: Monitor changes in rules, policies and legislation, and identify how they may influence the organisation, existing operations, or a specific case or situation.
• Provide legal advice: Provide advice to clients in order to ensure that their actions are compliant with the law, as well as most beneficial for their situation and specific case, such as providing information, documentation, or advice on the course of action for a client should they want to take legal action or legal action is taken against them.
• Ensure law application: Ensure the laws are followed, and where they are broken, that the correct measures are taken to ensure compliance to the law and law enforcement.

This knowledge is sometimes, but not always, required for the role of intellectual property consultant. However, mastering this knowledge allows you to have more opportunities for career development.

• Patents: The exclusive rights granted by a sovereign state to an inventor’s invention for a limited period of time in exchange for the public disclosure of the invention.
• Trademarks: The recognisable signs, designs, and expressions that identify and distinguish products and services of a specific source from those of others.
• International law: The binding rules and regulations in the relations between states and nations, and legal systems dealing with countries rather than private citizens.
• Legal research: The methods and procedures of research in legal matters, such as the regulations, and different approaches to analyses and source gathering, and the knowledge on how to adapt the research methodology to a specific case to obtain the required information.
• Commercial law: The legal regulations that govern a specific commercial activity.
• Corporate law: The legal rules that govern how corporate stakeholders (such as shareholders, employees, directors, consumers, etc) interact with one another, and the responsibilities corporations have to their stakeholders.
• Technical terminology: Type of language used in a certain context, containing terms that have a meaning specific to a particular group or activity, such as in industry, medicine, or law.
• Court procedures: The regulations which are in place during the investigation of a court case and during a court hearing, and of how these events occur.
• Copyright legislation: Legislation describing the protection of the rights of original authors over their work, and how others can use it.

These skills and competences are sometimes, but not always, required for the role of intellectual property consultant. However, mastering these skills and competences allows you to have more opportunities for career development.

• Negotiate in legal cases: Negotiate on the client’s behalf during the treatment of a legal case in order to obtain the most beneficial outcome for the client, and to ensure that all decisions are compliant with legal regulations.
• Analyse big data: Collect and evaluate numerical data in large quantities, especially for the purpose of identifying patterns between the data.
• Present legal arguments: Present legal arguments during a court hearing or during negotiations, or in written form after a trial concerning its outcome and sentence, in order to ensure the best possible outcomes for the client or to ensure the decision is followed. Present these arguments in a manner that is compliant with regulations and guidelines and adapted to the specifications of the case.
• Interpret law: Interpret the law during the investigation of a case in order to know the correct procedures in handling the case, the specific status of the case and the parties involved, the possible outcomes, and how to present the best arguments for the most favourable outcome.
• Create patent draft: Make a precise description of the invention in legal terms.
• Handle conflicts: Mediate in conflicts and tense situations by acting between parties, such as service users, important others like families, and institutions, striving to effect an agreement, reconciliate, and resolve problems.
• Develop licensing agreements: Compose the conditions and terms related to assigning limited use rights for properties or services.
• Provide advice on trademarks: Provide advice to individuals and businesses on how to properly register trademarks and on the use and originality of the trademark.
• Apply for patents: Defend the interests of the inventor or manufacturer when appealing for patents at the relevant patent office. Make sure application deadlines are met, also when applying for renewal.
• Provide advice on inventions: Provide advice to inventors and manufacturers as to whether their inventions will be granted patents by researching if the invention is new, innovative and viable.
• Advise on licencing procedures: Advise individuals or organisations on the procedures involved in requesting a specific licence, instructing them on the necessary documentation, the application verification process, and licence eligibility.

3339 – Business services agents not elsewhere classified

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References

1. Intellectual property consultant – ESCO