How to scope part-time IP and licensing support

Scope part-time intellectual property and licensing support by separating the commercial work from the specialist work. A part-time in-house lawyer can often handle commercial licensing: negotiating, drafting and managing licence agreements. Patent prosecution, trademark filings and contentious IP matters usually need specialists, and the scope should say so. Write down who owns each decision and when matters escalate. This guide is not legal advice.

Separate the two kinds of work

Commercial licensing

• Licence agreements in or out, such as software, content, data or brand licences
• Terms on ownership, scope, restrictions, fees, term and termination
• Open source and third-party component review, at a policy level
• Contributions from vendors, contractors and partners, and who owns the results

Specialist IP

• Filing and prosecuting patents and trademarks
• Freedom to operate and infringement opinions
• Disputes and enforcement
• Registration strategy in multiple countries

Specialist IP work often requires lawyers or agents with specific qualifications in specific places. A part-time commercial lawyer can coordinate it but should not be assumed to do it.

Know the basics you will be managing

WIPO's technology-transfer guidance describes licensing as defined permission to use rights, with scope that can vary by territory and field of use. For staffing, identify the rights, permitted uses, territories, ownership records and specialist questions. The applicable law and filing strategy need separate qualified review.

Map what you own and what you use

Before scoping a role, build a simple IP register:

• What the company creates: code, content, designs, brand names, data
• Who created it: employees, contractors and agencies, and what agreements exist
• What the company licenses in, on what terms and until when
• What the company licenses out, to whom and on what terms
• Any registrations and their renewal dates

Gaps in this register are often the first thing a part-time lawyer fixes.

Decide who owns what

• The lawyer. Drafts and negotiates licences, maintains the register and templates, and advises on standard questions.
• The business owner. Decides commercial terms and what the company is prepared to license.
• Specialist counsel. Handles filings, opinions and disputes.
• The GC or executive. Approves exceptions and high-risk matters.

Set escalation rules

Escalate to the GC or specialist counsel when:

• A licence would give up ownership of core technology
• A dispute or demand letter arrives
• Open source or third-party terms may affect your product's distribution
• A deal involves exclusivity or an unusual transfer
• The question depends on law in a place the lawyer is not qualified to advise on

Scope the part-time role

A scope might include:

• Days or hours per month
• A list of agreement types the lawyer handles end to end
• A one-time project: the IP register and licence templates
• Escalation rules and who they report to
• How specialist counsel is engaged and who instructs them
• A review date

Questions to ask

1. What licensing agreements have you negotiated inside a company, described in general terms?
2. Where are you qualified, and what would need a specialist?
3. How do you handle open source and contractor ownership questions?
4. How would you build the register and templates?
5. What would you escalate in the first month?

We match lawyers for intellectual property and licensing work through Fractional InHouse. Tell us which types of agreements, assets and jurisdictions the role covers so we can assess the experience you need.

A sample first quarter

• Month one: build the IP register and review the most important licences in and out
• Month two: draft or refresh licence templates and a short negotiating playbook
• Month three: clear the licence backlog, agree the escalation list and decide whether the role continues, shrinks or ends

A role scoped like this has visible results at each stage, which makes it easier to judge.

Checklist

• Commercial and specialist work separated
• IP register started
• Ownership of decisions assigned
• Escalation list agreed
• Specialist counsel named
• Scope and review date written