How to obtain an effective IP, business-oriented, strategy from a law firm?

Companies often struggle with their Intellectual Property strategy. They setup, sometimes impose, an Intellectual Property strategy but often do not obtain a clear return on investment on the ressources spent for setting up the strategy and implementing it. This causes lots of frustration in the management team.

While there is no magic formula, I believe that a recipe for obtaining an effective IP, business-oriented, strategy requires finding the right individual for the job. However, finding the right person is not enough since everything has to be made.

The individual should have the following prerequisites:

1. Have a pertinent legal expertise or know ressources having that pertinent legal expertise;
2. Have a technical expertise in the industry of the client;
3. Have a track record and work in a respectable firm;

Other ingredients are needed for obtaining good results; in fact the individual to be selected should be able to:

4. Understand the business of the company, the challenges or the pitfalls associated with it;
5. Learn and understand the competition scene and be proactive with respect to it;
6. Establish a clear IP strategy including clear goals and milestones;
7. Understand the objectives of the company and the ressources available (Intellectual Property must be/become integrated in the business strategy);
8. Get frequent feedback from the company (or be proactive to get it);
9. Help the company control its costs or set a system to control the costs associated with IP;
10. Be accountable (measure ROIp);
11. Be flexible to amend the strategy; and
12. Have a business network to propose synergies to the client.

The company must therefore make sure that the individual has more than the prerequisites.... and do a serious due diligence to avoid deceptions...