The Critical Patent Role of General Counsel

Many General Counsel (GCs) view patents as outside their core responsibilities, leaving patent strategy to engineers, R&D teams, or outside counsel. However, in today’s competitive landscape, the GC is often the only link between the C-suite and the strategic management of the company’s patent portfolio. If the GC isn’t guiding executives on patent positioning and expenditures, no one is.

C-suite leaders increasingly rely on the GC to ensure that patents serve business objectives, provide competitive advantages, and justify their costs. Without a GC-driven strategy, patent investments can become disconnected from the company’s broader goals, leading to unnecessary spending and missed opportunities.

The GC’s Role in Aligning Patents with Business Strategy

While GCs don’t need to be patent experts, they must ensure that the company’s IP efforts are aligned with its strategic vision. This involves:

1. Educating the C-Suite on the Business Role of Patents – The GC must translate complex patent issues into business-relevant insights, helping executives understand how patents protect key revenue streams, enhance valuation, and serve as competitive tools. Without this guidance, patents are often seen as a legal expense rather than a strategic asset.
2. Ensuring Patent Investments Are Justified – The GC should regularly assess whether patent expenditures align with corporate priorities. This includes reviewing whether patents are effectively blocking competitors, supporting key technologies, and contributing to growth.
3. Bridging the Gap Between Legal, Business, and Technical Teams – Engineers tend to focus on technical nuance, while patent attorneys focus on translating that nuance into protection. Without strategic oversight, this leads to technically sound but commercially irrelevant patents. The GC must ensure that patent decisions serve broader business goals.

Working with an Outside Patent Strategist

To maximize the value of the company’s patent portfolio, the GC should consider working with an outside patent strategist who goes beyond traditional patent prosecution. A strategist can:
•    Identify gaps in patent coverage that competitors might exploit
•    Develop a filing strategy that balances protection and cost efficiency
•    Align the company’s IP strategy with investment, partnerships, and market expansion

Unlike traditional patent counsel who primarily focus on obtaining patents, a strategist ensures that every patent serves a clear business purpose.

Conclusion

The GC plays a critical role in ensuring that patent investments support the company’s business strategy. If the GC doesn’t take the lead in guiding the C-suite on patents, no one will. By taking a proactive approach and leveraging external expertise where needed, the GC can turn patents into a true competitive advantage—rather than just a legal expense.