Intellectual Property Culture by Eric M. Dobrusin and Ronald A. Krasnow, is a kind of handbook for actual and aspiring in-house IP managers. Although it does not assume knowledge of IP, and defines trade secrets, patents, and other basic concepts, the book is not merely for new-comers, but includes much that licensed patent agents or patent attorneys will find interesting, particularly those that switch from working for service providing law firms to becoming in-house counsel.
Rather than to teach how to draft patents, the book teaches how to create an IP culture for a corporation. Infringement and competitors IP is discussed before how to plan a patent portfolio. Trade secrets and confidentiality are discussed before patents.
There are some very useful tips regarding attorney-client privilege in the US. In some cases, directors are advised to create personal privilege by consulting with IP Lawyers directly instead of as representatives of the firm.
Outside Counsel will be ambivalent about the book. On the one hand, there is a frank and revealing description of how many IP law firms operate, and a non-polemic but nevertheless implied criticism of common leveraging practices where the less experienced personnel do the billable work. On the other hand, in a table of avoidable causes of large legal bills is “trying to do the job of IP counsel to save a few bucks.”
There is a particularly good chapter on claim reconstruction that includes a table of patent terms that companies have spent millions in litigation based on what words like ‘and’, ‘about’, ‘composition’ and ‘one’ mean.
I am unaware of any other book that is directed at the corporate niche in this mannerand suspect that the conscientious CTO, internal legal counsel, CEO or Vice President responsible for IP matters will read the book systematically and then refer to it regularly.
Intellectual Property Culture by Eric M. Dobrusin and Ronald A. Krasnow, Oxford University Press, 2008. 382 pages, including some useful appendices, boiler-plate contracts, NDAs, etc.