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New Job as Patent Counsel? Expect The Unexpected.

Updated: May 2

April 5. 2022

By Jose Jimenez, Esq – Former Chief Patent Counsel & Registered Patent Attorney


On my first day at American Medical Systems, Inc. (AMS), a small medical device company in Minnesota, as their first Chief Patent Counsel, my boss said, “I’ll need a draft of your patent strategic plan in one week. And oh, by the way, review this lawsuit we just received from a physician. He thinks we stole his invention.”


Somehow, this issue of drafting a strategic plan never came up during my interviews with AMS, nor had strategic plans been a topic of law school. So, while addressing this immediate priority of the lawsuit, I got to work on this strategic plan. Come to find out, the strategic plan was a priority, as meetings with the CEO and Board Chairman later confirmed. Leadership had in mind to aggressively acquire other smaller medical device companies as part of their growth strategy. This was good news. Intellectual property (IP) would be more than an afterthought. It would be an essential part of company strategy and growth. Now I had to do my part.


Fortunately, years previously I had been a general manager and a sales director, experiences which rounded out my career as a patent practitioner. So, in putting myself in that position, I asked myself many business-related questions. Here are a few:


1. How does my IP strategy help my immediate goal of acquisition or potential divestitures or a future merger?

2. Am I prepared to defend AMS in a lawsuit from a big competitor or even a small one?

3. Do I have what it takes to stop a competitor, and if not, how do I get there?

4. Can I monetize the patents I have or use them as business asset for collateral?

5. With a good IP strategic plan, will I be ready for the day the CEO stops by and asks any of the above questions.


Just like getting in shape or losing weight, it takes time to create and implement a patent strategic plan, and several attempts may be needed to get it right, but you need to get started. How? Here is a hint: bone up on your market and competitive landscaping and how to perform a SWOT analysis (Strengths, Weaknesses, Opportunities, Threats). To do well with your patent strategy, you need to understand the competitive field and where your company wants to go. This will put your patent portfolio into context for your strategic plan.


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