WHAT DOES AN INTELLECTUAL PROPERTY COUNSEL DO?

Published: Oct 08, 2025 - The Intellectual Property Counsel manages a global patent portfolio by preparing and prosecuting patent applications, guiding outside counsel, and ensuring alignment with corporate strategy and technology roadmaps. This role involves advising internal teams on intellectual property matters, including portfolio management, due diligence for mergers and acquisitions, and the negotiation of IP terms in various agreements. The Counsel also collaborates with engineering, product, and legal teams to enhance invention capture, streamline patent operations, and maximize portfolio value through licensing and strategic initiatives.

A Review of Professional Skills and Functions for Intellectual Property Counsel

1. Intellectual Property Counsel Key Accountabilities

  • Intellectual Property Strategy: Provide strategic legal counsel on the competitive intellectual property landscape for current and future product portfolios.
  • Technology Strategy: Advise on technology development plans to ensure alignment with the company’s IP strategy.
  • Patent Development: Collaborate with R&D teams to identify and evaluate patentable inventions.
  • Innovation Engagement: Engage regularly with internal and external research groups to capture innovation opportunities.
  • Patent Management: Oversee the preparation and prosecution of patent applications before the USPTO and international patent offices.
  • Legal Coordination: Coordinate with both in-house and outside counsel to ensure consistent global IP protection.
  • Patent Monitoring: Monitor the progress of patent filings and maintain alignment with business priorities.
  • IP Education: Educate colleagues on intellectual property issues and documentation requirements.
  • Contract Guidance: Guide drafting and interpreting IP-related agreements, including licenses and research collaborations.
  • IP Culture Development: Promote best practices to strengthen the organization’s intellectual property culture and awareness.

2. Intellectual Property & Marketing Counsel General Responsibilities

  • Advertising Compliance: Review advertising and communication materials to ensure compliance with applicable laws, regulations, and brand standards.
  • Digital Media Advisory: Advise clients on social media and digital content matters, including disclosure obligations and endorsement guidelines.
  • Claim Substantiation: Evaluate advertising substantiation issues to ensure accurate and legally compliant claims.
  • Contract Drafting: Draft and negotiate sponsorship, promotion, licensing, confidentiality, music, sports, talent, and advertising agency agreements.
  • Intellectual Property Counsel: Provide counsel on trademark, copyright, patent, trade secret, and rights of publicity and privacy matters.
  • Regulatory Compliance: Research and advise clients on food and nutrition regulatory issues and advertising standards, including compliance with FDA, USDA, FTC, and international requirements.
  • ESG Advisory: Advise clients on Environmental, Social, and Corporate Governance (ESG) matters, including public reporting, goal setting, and communication review.
  • Child Marketing Compliance: Counsel clients on marketing to children, ensuring adherence to relevant guidelines and policies in both domestic and global markets.
  • Cross-Functional Expertise: Develop cross-functional expertise in additional legal areas relevant to business operations.
  • Innovation Culture: Promote a culture of innovation, creativity, and proactive IP management throughout the organization.

3. Senior Intellectual Property Counsel Role Purpose

  • IP Portfolio Management: Strategically manage and expand the global intellectual property portfolio across patents, trademarks, copyrights, and trade secrets.
  • Technology Collaboration: Partner with engineering and product teams to identify and document innovative technologies and processes.
  • Invention Strategy: Guide the development and protection of new inventions through proactive IP strategies aligned with business goals.
  • Patent Prosecution: Collaborate with outside counsel to prepare, file, and strategically prosecute patent applications.
  • Idea Capture Process: Establish internal processes for identifying and capturing patentable ideas effectively.
  • Portfolio Tracking: Implement systems to track invention disclosures, monitor filings, and maintain portfolio efficiency.
  • IP Training: Lead internal training initiatives to enhance awareness of patent and IP best practices.
  • Innovation Culture: Foster a culture of innovation and responsible IP management across the organization.
  • Legal Support: Provide comprehensive legal and strategic support for all intellectual property matters.
  • Brand Enforcement: Coordinate with internal stakeholders to ensure consistent enforcement of brand and IP rights.

4. Intellectual Property Counsel Essential Functions

  • IP Strategy Development: Develop and implement strategies to build a world-class intellectual property portfolio focused on drone delivery technologies.
  • Innovation Collaboration: Collaborate with inventors, engineers, and external counsel to identify and protect innovative technological developments.
  • Technology Analysis: Prepare technology landscape analyses to guide patenting priorities and strengthen competitive positioning.
  • Invention Management: Lead invention harvesting sessions and patent review committees to evaluate invention quality and strategic value.
  • Patent Review: Review invention disclosures, patent drafts, and office actions in partnership with inventors and legal teams.
  • Trademark Management: Coordinate with outside counsel to grow and maintain a robust global trademark portfolio.
  • Trade Secret Protection: Manage trademark oppositions and oversee the organization’s trade secret protection program.
  • Open-Source Compliance: Guide the use of open-source software and ensure related compliance.
  • Legal Compliance: Stay current on intellectual property, aviation, product, and privacy laws to support regulatory compliance.
  • Market Expansion: Assess intellectual property implications for new international markets and business expansion.
  • IP Litigation Support: Support IP-related components of litigation, mergers and acquisitions, and technology transactions.

5. Intellectual Property Counsel Additional Details

  • IP Advisory: Serve as a trusted advisor on all intellectual property matters, both locally and globally, with emphasis on invention mining, patentability, prosecution, and freedom to operate.
  • IP Strategy Development: Develop and implement IP strategies that align with overall business and strategic objectives.
  • Cross-Functional Collaboration: Collaborate with cross-functional teams to ensure effective execution of IP initiatives.
  • Counsel Management: Direct and manage outside counsel in preparing and prosecuting patent and trademark applications.
  • Agreement Negotiation: Negotiate, draft, and review a wide range of IP-related agreements, including licenses, research collaborations, confidentiality, and material transfer agreements.
  • Freedom-to-Operate Analysis: Perform comprehensive freedom-to-operate analyses for new and emerging technologies.
  • Due Diligence: Conduct due diligence to support strategic transactions, including mergers, acquisitions, and major partnerships.
  • Litigation Support: Provide legal and strategic guidance on IP litigation and dispute resolution.
  • Adversarial Proceedings: Advise senior legal and business leaders on adversarial proceedings such as European oppositions and U.S. IPR actions.
  • Risk Management: Ensure proactive risk management and strategic alignment of IP activities with corporate goals.

6. Intellectual Property Counsel Roles

  • Freedom-to-Operate Analysis: Conduct patent freedom-to-operate searches and prepare clearance opinions for technologies spanning multiple product lines, including equipment, apparel, and entertainment innovations.
  • Innovation Collaboration: Collaborate with R&D and design teams across brands to capture inventive concepts and complete Invention Disclosure Forms.
  • Patent Prosecution: Draft and prosecute utility and design patent applications for new technologies before the USPTO.
  • International IP Management: Coordinate with and manage foreign counsel to obtain and maintain international patent protection.
  • Portfolio Development: Assess the existing patent portfolio to identify opportunities for new filings and strategic portfolio development.
  • Product Integration: Link existing patents to upcoming product launches and maintain the company’s online patent marking database.
  • IP Training: Provide training to R&D and design teams on patent and trade secret principles.
  • Process Guidance: Guide teams through procedures and best practices for patent filings, innovation capture, and IP protection.
  • Litigation Support: Support litigation counsel in intellectual property infringement and enforcement matters.
  • Docket Management: Oversee the patent docketing system and manage related operations to ensure accuracy, compliance, and efficiency.

7. Intellectual Property Counsel Tasks

  • IP Protection: Ensure maximum legal protection for the company’s intellectual property assets, including patents, trademarks, copyrights, trade secrets, and other intangible and patentable properties.
  • Strategic Assessment: Work with abstract concepts and complex situations across multiple functional areas of the business to identify strategic opportunities and risks.
  • Issue Evaluation: Assess intangible variables to identify and evaluate fundamental issues, developing strategies and direction for key functional areas.
  • Business Alignment: Develop deep expertise in the company’s business strategies, operations, and overall corporate goals to align IP initiatives with strategic objectives.
  • Operational Leadership: Direct and oversee the activities of one or more functional areas, divisions, product groups, or service areas through management teams responsible for operational success.
  • Policy Implementation: Formulate and implement corporate and organizational policies to strengthen intellectual property governance and compliance.
  • Innovation Leadership: Leverage comprehensive company knowledge to introduce innovative concepts and promote new ideas that enhance IP protection and business competitiveness.
  • Strategic Leadership: Provide strategic direction and leadership to senior managers across departments and operations, fostering alignment and excellence.
  • Executive Engagement: Engage with executive-level management internally and externally to negotiate key matters, influence policy decisions, and build formal networks across business units.
  • Corporate Strategy Solutions: Develop and implement creative, effective solutions to address critical issues and broad company challenges impacting intellectual property and overall corporate strategy.

8. Senior Intellectual Property Counsel Details and Accountabilities

  • Invention Mining: Develop and scale invention mining and disclosure processes by conducting patent harvest sessions and collaborating with cross-functional teams to identify patentable subject matter.
  • Patent Portfolio Management: Actively manage and expand the company’s patent portfolio to align with strategic business objectives.
  • Patent Strategy Development: Collaborate with business development and engineering teams to design and execute U.S. and international patent strategies.
  • Trademark and Copyright Oversight: Oversee the management of the company’s trademark and copyright portfolios to ensure comprehensive IP protection.
  • Open-Source Compliance: Develop and administer the company’s open-source compliance program to mitigate legal and operational risks.
  • Licensing Strategy: Provide strategic guidance on technology and intellectual property licensing initiatives to support business growth and partnerships.
  • Counsel Management: Manage outside IP counsel to ensure high-quality and timely delivery of patent, trademark, and copyright services.
  • IP Training: Train engineering and business teams on intellectual property topics and counsel them on IP considerations in commercial and corporate matters.
  • Risk Management: Identify, assess, and manage third-party IP risks to safeguard company innovation and operations.
  • Patent Data Management: Prepare and update patent database searches, classify patent publications, and assign technical patent experts to corresponding classifications.

9. Intellectual Property Counsel Overview

  • Global IP Strategy: Develop and advance the company’s global IP strategy with a focus on assessing the IP portfolio and ensuring alignment with business objectives.
  • Counsel Management: Manage outside counsel on the preparation, filing, and prosecution of patent and trademark applications and registrations.
  • Process Optimization: Optimize invention submission and review processes to enhance efficiency and innovation capture.
  • Competitive Analysis: Provide strategic counsel on the competitive IP landscape by tracking and analyzing the IP filings of competitors and customers.
  • Litigation Management: Oversee and manage IP litigation and third-party claims effectively and efficiently.
  • M&A Support: Participate in M&A activities, including IP due diligence, transactional support, and post-acquisition integration.
  • Transactional Collaboration: Collaborate with internal legal teams and external counsel to provide IP-related transactional support.
  • IP Training: Prepare and deliver employee training sessions on innovation protection, patent processes, trade secret management, and best practices for safeguarding intellectual property.
  • Budget Management: Manage the legal IP budget to meet organizational cost and financial targets.
  • Market Monitoring: Analyze market trends and monitor developments in intellectual property protection and enforcement.
  • Business Understanding: Develop and maintain a deep understanding of the company’s business operations, technologies, product goals, sales models, industry dynamics, and challenges.

10. Intellectual Property & Product Counsel Job Description

  • IP Program Management: Play a key role in developing, managing, and supporting the company’s intellectual property program.
  • Invention Identification: Collaborate with stakeholders to identify strategically valuable and patentable inventions that align with business objectives.
  • Global IP Protection: Work with outside counsel to obtain and maintain global patent and trademark protection.
  • IP Training: Develop and deliver training and enablement programs on patents and other intellectual property topics.
  • Product Compliance: Partner with the Engineering and Product Management teams to provide guidance on product-related legal and compliance matters.
  • Regulatory Adherence: Ensure adherence to applicable laws, regulations, compliance frameworks, and customer contract obligations.
  • Commercial Collaboration: Collaborate with Commercial and Privacy teams to address customer, prospect, and partner inquiries related to company offerings.
  • Contract Negotiation: Negotiate agreements with key vendors and technical partners to support product innovation and business growth.
  • Product Development Support: Support product development and launch initiatives by balancing innovation with legal and policy considerations.
  • Cross-Functional Coordination: Coordinate with cross-functional stakeholders, including Product, Engineering, Marketing, and Tax, to ensure cohesive and compliant execution.
  • Regulatory Awareness: Stay informed on evolving industry standards, laws, and regulations that impact products and IP strategy.
  • Operational Improvement: Work with internal teams to improve operational processes and ensure that business needs are met efficiently and effectively.

11. Intellectual Property Counsel Functions

  • IP Strategy Development: Establish proactive counseling relationships across all levels and functions of Owens Corning to develop and drive global IP strategies aligned with corporate objectives.
  • Team Coordination: Work independently while maintaining close coordination with the global IP team to ensure consistency and strategic alignment.
  • Legal Partnership: Partner with the Legal team to identify and navigate IP opportunities and challenges on key strategic initiatives.
  • Invention Harvesting: Harvest inventions by evaluating idea submissions and recommending the most effective protection methods for key innovations.
  • IP Landscape Analysis: Conduct patentability and competitive IP landscape analyses to provide actionable insights that guide business and innovation teams.
  • Asset Development: Drive the creation and development of business-relevant IP assets for key growth projects in collaboration with global IP counsel.
  • Protection Strategy: Ensure robust and commercially relevant protection strategies for assigned projects by understanding and anticipating changes in patent and trade secret laws.
  • Counsel Management: Manage outside counsel in all aspects of IP practice, including filings, prosecution, trade secrets, and opinion work, to optimize portfolio quality and value.
  • Freedom-to-Operate Assessment: Oversee clearance work for new products and innovations, clearly communicating freedom-to-operate risk assessments and practical recommendations to business teams.
  • IP Training: Provide IP education and training to internal clients.
  • IP Enforcement: Assist in analyzing and pursuing IP enforcement against third parties and in defending against third-party IP claims.
  • Competitor Monitoring: Monitor competitor patent publications and issuances, advising the company on potential impacts and strategic responses.

12. Intellectual Property Counsel Accountabilities

  • Patent Docket Management: Manage a docket of patent matters across one or more technology areas, including preparing and prosecuting patent applications before the USPTO.
  • Outside Counsel Oversight: Oversee a global network of outside counsel, providing guidance and instructions based on patent prosecution principles, technology roadmaps, corporate strategy, and portfolio maintenance objectives.
  • M&A Support: Support the Legal team in M&A transactions by conducting intellectual property due diligence and risk assessments.
  • Process Improvement: Collaborate with law department groups, business units, and other functions to improve patent operations, processes, and efficiencies.
  • Contract Negotiation: Draft, review, and negotiate standard IP terms and clauses for agreements such as non-disclosure, development, collaboration, and licensing agreements with clients, suppliers, and internal partners.
  • Product Development Support: Work directly with product and research technology teams to support new product development and project initiatives.
  • IP Advisory: Advise internal business units on IP matters, with a primary focus on global patent strategy and protection.
  • Invention Harvesting: Engage with engineering teams to harvest invention disclosures and provide IP training to enhance innovation capture.
  • Patent Strategy: Provide strategic patent counsel to internal clients regarding portfolio management and third-party IP risk mitigation.
  • Portfolio Evaluation: Participate in patent committee meetings to evaluate invention disclosures and guide portfolio decisions.
  • Portfolio Transactions: Assist in patent divestitures, acquisitions, and licensing activities to maximize portfolio value and strategic opportunities.
  • Global Collaboration: Collaborate with a global team of attorneys, paralegals, and patent engineers to define and refine processes for global patent operations.

13. Intellectual Property Counsel Job Summary

  • IP Rights Management: Perform and coordinate activities related to intellectual property rights, focusing on patent and design rights (PDRs).
  • Patent Prosecution: Prosecute patent and design rights to strengthen the company’s portfolio within the PDR Creation process, including preparing and filing applications, communicating with patent offices during examination proceedings, interviewing examiners at the USPTO, entering national and regional phases, and defending the company's PDRs in litigation.
  • Legal Advisory: Provide legal advice to inventors and business management, while managing in-house paralegals, patent engineers, and outside counsel to obtain patent protection within budget constraints.
  • Prior Art Research: Prepare and conduct prior art searches in patent databases and maintain the company’s patent portfolio.
  • Freedom-to-Operate Management: Manage the PDR Clearance process to verify the freedom-to-operate for company products and services in collaboration with product managers, project leaders, and technical patent experts.
  • Patent Challenges: Advise decision-makers and manage patent challenges such as oppositions, IPR proceedings, and licensing negotiations.
  • Agreement Drafting: Render or recommend obtaining outside counsel opinions, draft and review patent assignments, licenses, and other IP-related agreements, and conduct clearance searches.
  • Patent Assessment: Review and assess the relevance of patent publications and support patent litigation proceedings.
  • Global Patent Prosecution: Prepare and prosecute global patent applications related to all aspects of the company’s technical platforms.
  • Outside Counsel Management: Manage outside counsel across multiple projects to ensure alignment and quality outcomes.
  • PDR Process Administration: Administer and manage the PDR Screening process with collaboration from product managers, project leaders, and technical patent experts.
  • IP Training: Provide IP education and training for employees, technical patent experts, and users of PDR Clearance, Creation, and Screening processes.
  • Operational Procedures: Ensure that effective operational procedures are in place for handling PDR matters, including Screening, Clearance, and Creation workflows.
  • Competitor Monitoring: Monitor and analyze competitor PDR activities to anticipate market and innovation trends.

14. Intellectual Property Counsel Responsibilities

  • IP Leadership: Take an active and strategic role in all intellectual property matters within the U.S., working closely with the Global IP Manager to execute global IP programs, strategies, and guidelines.
  • Budget Management: Manage the U.S. IP budget and oversee all related IP initiatives, programs, and actions.
  • Portfolio Counseling: Provide daily IP support, analysis, and counseling to business teams on portfolio management, including trademarks, trade dress, and copyrights, as well as new collections, creative content, and brand protection.
  • Global Collaboration: Collaborate with global IP teams and external counsel to develop and implement a comprehensive, cost-effective IP action plan for the U.S. market.
  • Strategy Execution: Execute global IP strategies locally while driving return on investment and achieving measurable results through qualitative and quantitative KPIs.
  • IP Risk Assessment: Conduct IP clearances, prior art analyses, and risk assessments for new projects using relevant databases, web tools, and case law research.
  • Legal Documentation: Draft, review, and analyze IP-related legal documents, including agreements, assignments, licenses, letters of consent, cease-and-desist letters, takedown notices, and oppositions.
  • Legal Analysis: Prepare legal analyses, opinions, memoranda, and assessments to inform strategic business and legal decisions.
  • Enforcement Management: Handle anti-counterfeiting and enforcement activities, coordinate investigative firms, and manage enforcement programs.
  • Global Enforcement Collaboration: Collaborate with international IP teams to oversee anti-counterfeiting measures and other IP protection efforts.
  • Litigation Coordination: Coordinate with outside counsel, review pre-litigation and litigation materials, and ensure evidence collection and preservation.
  • Defensive IP Strategy: Develop and implement a strong defensive IP strategy to mitigate potential risks and safeguard intellectual property and corporate reputation.
  • Digital Brand Protection: Work with digital platforms and social media teams to enhance online brand protection and implement best practices.
  • Operational Efficiency: Leverage technology, IP management systems, and standardized protocols to strengthen operational efficiency.
  • External Engagement: Engage with U.S. IP associations, law enforcement, and brand protection agencies to advance training initiatives, joint enforcement efforts, and coordinated anti-counterfeiting actions.
Relevant Information
What Does An Intellectual Property Manager Do?