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The faces of intellectual property services: roles and tasks for each department

Finding the right provider for intellectual property services is challenging for many reasons; determining the unique requirements, budget, and potential obstacles that will be faced can be difficult, if you do not already have in-house IP experts. Therefore, engaging with an IP specialist is generally required to determine what services can be beneficial to a business. In this article, we will present the departments, the roles, and the tasks of a typical IP service provider.


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Trademark Management

One of the advantages of using IP services is the ability to easily manage the many tasks that need to be completed to own a trademark. This can include trademark searching, filing, protection, disputes, licensing, assignments, and renewals.

Trademark searching involves advanced searches in specialist databases to find potential infringements or similar trademarks. Many businesses chose to forego this task as it can be laborious, especially when dealing with international trademark searches. However, an IP specialist saves time, resources, and money by completing the trademark searching process, the findings of which can strengthen a trademark application and significantly reduce the risk of a trademark being refused.

Additionally, a service provider can manage the filing and protection requirements for a trademark, which can be more cost-effective for a business. They remove the burden of tasks, such as preparing, executing, notarizing, and legalizing documentation, which can be overwhelming for a business with a small legal team or a high volume of applications.

A trademark management team also ensures that trademark renewals are kept up to date without burdening a company’s resources. The requirements can vary for different countries and regions. However, taking the United States as an example, an IP provider would prepare and submit the documentation required for proving the use of a trademark (Section 8 Filing) as well as renewing the registration (Section 9 Filing). They also consult with an in-house team about the addition or removal of trademarks from their IP portfolio.


Name Creation

When taking a new brand, product, or service to market, using the right name can greatly influence its success. However, this task can be challenging to complete in house, since it requires cross-collaboration between different teams or even different organizations. Then, when an organization overcomes that hurdle, it needs to ensure that the name is unique, available, and protected.

When working with an intellectual property services provider, a dedicated IP specialist defines the requirements and then uses advanced tools to create names for the brand. They complete any of the associated tasks for a trademark application to ensure that the brand remains protected, so the in-house team can focus on other go-to-market activities.


IP Recordals

Undertaking an IP recordal project to amend IP records can seem like a complex and overwhelming task. However, an intellectual property services specialist completes the application to record the changes, submits any necessary fees, gathers and submits any required documentation, and ensures that all documents are officially legalized in all the required regions.


IP Portfolio Strategy

When a business starts to build an IP portfolio, there are numerous intellectual property services that can help them to optimize their IP strategy throughout its life cycle. An IP specialist continuously assesses the portfolio and its individual assets to ensure that it brings the maximum amount of value to a business. This includes the identification of inconsistencies, such as outdated ownership of an asset, which may need to be rectified with IP recordals.

An IP specialist will also analyze the current and future fees for IP assets. In cases where intellectual property is unused or ineffective, they will determine whether there is any possibility to monetize assets or remove them from the portfolio. They will also identify opportunities for other potential IP assets and provide data on the requirements, costs, and benefits.

The extensive capabilities of an intellectual property services provider can be advantageous to many businesses. They play integral roles in developing strong IP portfolios, whilst ensuring that an organization is not overwhelmed with the maintenance of a successful portfolio. Even in cases where an organization has an extensive in-house IP management team, engaging with an IP services provider can provide fresh insights to solve complex issues. They can also provide expert support when an in-house team is overwhelmed with other tasks.

The faces of intellectual property services: roles and tasks for each department