It is essential for IP Counsel to take on the role of a collaborator with their R&D departments. A strong IP presence in R&D is becoming increasingly more important as collaboration and publishing is on the rise for most companies. Nothing is more counterproductive in protecting your products then a R&D team that views their IP counterparts as an obstacle.
Smaller companies are often turning towards collaboration as a means to reduce in-house costs. It is sometimes unrealistic for most small to mid size businesses to expect to keep all R&D in-house, and thus enters the risks and benefits of collaborating. More collaboration must come hand-in-hand with confidentiality, and stricter monitoring of projects from the perspective of the Chief IP Counsel. Keeping your scientists informed of the risks and making sure you are aware and updated on current projects will go a long way. Another tactic to reduce this risk is to consider changing future collaboration agreements into contracting work. While this will increase your budget, the risks of information leaks through publications and agreements to share information will be minimized.
Avoiding broader claims on upcoming technologies and products is ideal, but often time management will push Chief IP Counsel to file for broad claims with protection in mind. Being able to identify the tradeoff between filing picture claims on promising projects while ignoring subcategories and filing for it all up front can cut costs and accomplish your patent goals all the same. IP Counsel are responsible for ascertaining the risk levels of certain projects with regards to intellectual property. Communicating these risks in a realistic way and conditioning your senior level partners to understand each situation will enable IP Counsels to avoid these pitfalls.