Practical Market and Technical Research for IP Litigation and Investigations

TASA ID: 115

During the course of patent, trademark, or copyright application, prosecution, litigation, or licensing work, the need for independently obtained marketing/business and technical information and research often arises. Although the client and law firm may have some of this information, the need to perform some cost-effective, timely "MBA and/or Technical" type of assignment by engaging a marketing and/or technical researcher/expert may be justified. Consider the following three situations:

1. During IP litigation, there are several important and large tradeshows or conventions. Visits to these national and international sites by a well-prepared market/technical researcher/investigator can yield important information about: 1. prior art or use; 2. the state of the specific industry/business, product lines, and IP and innovations-past, present, and future; and 3. the key industry innovators in the technical and management areas, and often the ability to approach such individuals and listen to their "marketing hype;" "professional bragging," and in some cases query them casually for key information in the tradeshow environment. Even if the client is exhibiting at the convention, it may often be preferable to have an independent market/technical researcher "walk the convention floor and observe, listen, and pick up literature."

2. Visits and "phone call research" to selected manufacturing plants, stores (nationally or internationally), shopping centers, and flea markets of parties involved, potentially involved, or not involved in the litigation either undercover or open to supplement the tasks of #1 above.

3. The use of specialty data bases not normally utilized by law firms and perhaps by clients to ascertain information relating to tasks #1 and #2 above.

     IP market and technical research and investigation are highly specialized, and it's often difficult to find the expert with the best fit credentials.  In order to locate the ideal independent candidate, careful consideration should be given to the academic and practical background.  Experience as an engineer and inventor in small and large corporate entities and startups (with issued patents, trademarks, and copyrights); experience perhaps in a large university setting with exposure to prosecution (prosecution requires knowledge of validity, invalidity, infringement, non-infringement, and design around issues plus the foreign IP environment), licensing (licensing requires knowledge of IP valuation), and litigation management in diverse industries and technical fields with publication and teaching assignments; experience working with large and small IP firms in litigation with deposition and trial testimony experience (and if involved in a patent case, experience as a patent agent is a plus); and finally, outstanding academic credentials such as technical and marketing degrees-both undergrad and graduate-from prestigious universities-increase the odds for a successful match.

IP, Intellectual Property, is all about innovation, one of the most honorable and important drivers of economic prosperity.  Choosing the correct multi-disciplinary market and technical researcher is an essential tool for the IP attorney facing challenging litigation tasks.

This article discusses issues of general interest and does not give any specific legal or business advice pertaining to any specific circumstances.  Before acting upon any of its information, you should obtain appropriate advice from a lawyer or other qualified professional.

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