two2 –
Some businesses with active patenting programs employ ‘patent facilitators’, ‘patent liaisons’, ‘patent scientists’, or ‘patent engineers’. While the job descriptions vary, they commonly include i) identifying and encouraging the kinds of inventions that will bring the most value to the business; ii) working with scientists or engineers to ensure that high quality invention disclosures are prepared; ii) preparing filing / maintenance recommendations for management; iii) patent portfolio analysis; iv) patent searching; v) coordinating amongst patent council, technical personnel, and management; vi) providing support to attorneys for litigation and negotiation.
Typically the patent facilitator has a technical background and is familiar with the state of the art in the product lines of the business, and has some intellectual property experience or training. Many patent facilitators are patent agents.
The patent facilitator role can range from a minor assignment for a scientist or engineer, to an important full-time job with substantial influence in the business.
You asked
- “How can an IP professional succeed in this role? What does it take?” It’s like any other job - do what is necessary to make yourself invaluable to your boss and your boss’s boss. And that’s much easier said than done.
- “How can he expand in this role moving away from the core expertise of searching?” - Searching should not be the core role. The core role is to ensure that the business is patenting inventions that will bring the most value to the business.
- “How has this role evolved over the years?” – A couple of decades ago the patent facilitator role was essentially clerical – maintain the docket.
I hope that helps.