S. Ramaswamy
JCB India Ltd - New Delhi
21 Apr 2009
How should a general counsel establish and communicate their companys approach to copyright and trademark protection?
In the first instance, relevant company employees must be educated and made aware about the principles and nuances of IP protection, in a language that is easily understood and accepted. Once this has been achieved, the next stage is to discover exactly what kind of IP protection the company requires, in order to meet its business objectives.
This will require the creation of a company intellectual property “road map” of the actions required, and their deliverables. It’s thus important that this road map should outline who “owns” each individual process, and also the timeframe for its delivery. This “project management” approach can be adopted for any activity, not just in relation to copyright or trademark protection. Japanese companies use the approach known as a “Key Result Area” (KRA) to the maximum advantage. KRAs are used in performance appraisal for individual employees, departments, corporate divisions and companies, thereby ensuring timelines..
Besides reacting to employees requests for assistance, in-house counsel should consider proactively monitoring IP developments for new opportunities that might arise. For example, they may wish to monitor the filing of patents by individuals and companies for new inventions that might be of interest to the company. In such cases, it might be advantageous to either acquire the rights to the patent, or to obtain a license to use it.
If it seems likely that a company will be subject to large scale litigation by another party, how should they respond?
A proactive approach must be the cornerstone of any business. Nevertheless, there are always likely to be situations and circumstances that will arise, which are beyond the control of the company. In such cases, both the legal department and senior management should be alerted, and kept engaged about the progress of these events.
In a major IP dispute, the in-house counsel should consider establishing a “think tank” to examine the issue. This think tank should include representatives from the legal, commercial, finance and corporate affairs department, plus the affected department/team. The rationale for the constitution of this ‘think tank’ should enable it to draw on the “best expertise “within the company, and to allow it to respond to the given situation.
The team should sit together to try to understand the situation. They should also try to construct a master document, outlining how the company arrived at this situation in a chronological date order. This master document would assist the company’s legal department in identifying the best specialist to advise them on the potential dispute.
The meeting should also set the future ground-rules for managing the situation, including the nomination of an official corporate spokesperson. The spokesperson must maintain the ground rules of secrecy in most situations, but also maintain a consistent approach when making public statements.
For any company involved in an IP dispute, secrecy is likely to be a major issue, especially given that they can last for months – even years. To maintain confidentiality, it would be useful to only bring along the very minimal amount of secretarial support to the think tank meetings, and only use a stand-alone computer to produce records of the proceedings.
The think tank should also agree who is going to have access to sensitive documents, and how they will be secured. This will require co-ordination between the legal and IT department, especially in relation to encryption of documents. Inevitably, documents gathered internally will have to be shared with the external specialist advisor, so that he can formulate his opinion, discuss the matter with the think thank, and “chalk out” the company’s strategy for handling the matter.
What role should a companys general counsel play in this process?
Arguably general counsel’s most important role is in relation to the selection and management of the specialist external legal advisor who will advise the company on the dispute. The selection criteria for this specialist advisor could be based on various parameters, such as their availability, bench strength, proximity to the work place – important where extensive face-to-face interactions will be require – and their past success record. It should be assumed they will have a good “brand / reputation”, and can be relied to keep their advice on the matter confidential. Often, this information can be gathered by way of oral canvassing, and by networking with other figures within the counsel’s own industry.
The cost of the specialist advisor may also be a consideration, depending on the situation. However if the stakes are extremely high, cost should not act as an impediment to hiring the best available advisor. In fast-moving case, the in-house counsel should consider asking their external advisor to agree to a “time line” for delivering specific services, since “time is the essence”.
One the specialist advisor has been selected, the in-house counsel should ask them for their preliminary observations about the merits of their case. These observations should be based on the company’s understanding of the chronology of events leading up the dispute, collated during the first think tank meeting. Day-to-day, the in-house lawyer should maintain an open line of communication with the specialist advisor, record the outcomes of any meeting with them, deliver documents as requested, and brief internal stakeholders on how the matter is progressing.
When acting on piece of IP litigation, how should the general counsel and specialist divide their workload?
A good general counsel knows his company better than the external adviser and, hence, is in a position to provide vital and important inputs to them. It is the general counsel’s role to use this knowledge to get the best out of their external advisor.
But general counsel should also recognize their own limitations. Out of necessity, they are generalists – they may have a broad understanding of legal acts, rules and processes, but they still require expert assistance to guide and navigate through them. Specialists are especially useful in relation to drafting and filing of provisional and final patents, the preparation of claims, fighting injunction battles for copyright protection, defending trade marks and conducting raid on counterfeiters - to name a few. If an in-house counsel has any doubts about the interpretation of a specific legal issue, they should always err on the side of caution, and consult a specialist. In my 25 years of work experience in related areas, I strongly have advocated the belief of division of work which leads to the maximum positive results.
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