Intellectual Property in the Boardroom: A General Counsel's Legal and Strategic Guide

A general counsel’s responsibilities can be vast and unrelenting, from managing mergers and acquisitions and navigating complex employment issues to handling a constant stream of internal legal matters. In this environment, intellectual property (IP), which has tremendous value and may give a company a competitive edge, often feels like a legal minefield best left on the back burner. But IP is more than a box to check. It can be leveraged and add value when effectively employed.

An Unpleasant Boardroom Conversation About IP

General counsel who don’t pay sufficient attention to their company’s IP portfolio can end up in the following scenario. They walk into a quarterly board meeting to explain why the company’s flagship product missed its revenue target. The reason? A competitor launched a similar offering months ago, undetected, and it has been slowly eroding your market share. The board looks at them, and the questions are unspoken but clear: “How did we not see this coming?” “What do we do next?” The answers must go beyond mere defense and reciting your current IP portfolio. The situation requires a clear strategy for leveraging your portfolio to counterattack, regain market position, and impose costs on the competitor.

Letting valuable IP assets go unprotected, undefended, and unasserted, or worse, having an IP protection strategy that is misaligned with your company’s growth plan, can have costly consequences. This reactive posture is a significant strategic error. When IP is neglected, it can become a critical liability, leading to lost contracts, devalued assets, and, in the high-stakes world of government contracting in particular, catastrophic business failures.

There is a cost associated with actively managing your IP, of course, but protection and enforcement doesn’t have to break the bank. It just must be strategic. This white paper provides a framework for general counsel to get out of fire-drill mode. It offers a legal roadmap for transforming IP management from a defensive necessity into a proactive driver of commercial growth and competitive advantage, particularly for companies operating under the unique pressures of government timelines and limited budgets.

Aligning IP With Commercial Goals: From Legal Hurdle to Business Catalyst

The converse of ignoring your IP can also be problematic. Too many companies employ outdated IP strategies, such as patenting everything in sight. This "shotgun" approach is not only expensive but rarely serves the needs of a fast-moving business. The goal is not to patent every innovation but to build a portfolio that captures and protects key competitive advantages and serves as a “war chest”—a collection of assets that can be deployed against infringement. This requires strategically investing your finite resources where they will generate the most value and create the most leverage against competitors. Your IP strategy must be inextricably linked to your company’s commercialization and growth goals and include not only building and maintaining the portfolio but asserting it when appropriate.

Start by mapping your IP directly to your revenue streams. This is more than conducting a simple inventory; it's a strategic analysis. Which assets underpin your core products? Which ones create a barrier to entry for competitors? Which ones appear to implicate the actions of your competitors? This exercise enables you to assess your portfolio and make informed, cost-effective decisions about what type of protection is most appropriate.

Patents are powerful but can be costly. They are best suited for foundational, easily reverse-engineered inventions with a long market life. A patent grants you a 20-year monopoly, but it requires you to disclose your invention publicly in detail. This is a strategic trade-off. For a core piece of hardware or a breakthrough mechanical device, it is often the best choice. And patents are indeed powerful. Not only can they be used to restrict a competitor’s actions, the mere threat of a patent-based legal action can bring a seemingly unapproachable foe to the negotiation table.

Trade secrets are ideal for assets whose value lies in their confidentiality, such as manufacturing processes, chemical formulas, algorithms, or client lists. Protection is perpetual, lasting as long as the information remains secret and reasonable measures are taken to safeguard it. This is a highly cost-effective option for innovations where the "how" is not immediately apparent from the final product. However, it requires rigorous internal controls such as NDAs, access logs, and employee training to be defensible. Succinctly put, trade secrets are cheap to acquire but sometimes challenging to assert.

Copyrights are the unsung heroes of many IP portfolios. This protection is inexpensive and applies automatically to original works of authorship, including software code (both source and object), technical manuals, website content, and marketing materials. While registration is required for enforcement in court, it’s a straightforward process that provides significant leverage against direct copying. And with timely registrations, copyrights carry statutory provisions for damages and attorney fees. The seasoned litigator will appreciate that simply proving infringement is only half the battle. Establishing damages can be a challenge, and having a statute that lays out damages once infringement is shown paves the path to a quick settlement.

Trademarks protect identifiers such as names, logos, slogans, and even sounds or colors that distinguish your goods and services from those of competitors. Their primary function is to prevent consumer confusion in the marketplace. Trademark rights can last indefinitely as long as the mark is actively used in commerce and properly defended. This makes them a critical asset for any company investing in marketing and aiming to build long-term customer recognition and loyalty.
Imagine your team develops a novel, patentable AI algorithm for optimizing logistics in government supply chains. However, this algorithm must use a specific data-sorting technique that was patented by another company five years ago. While your innovation is patentable, you have no freedom to operate because selling or using your product would infringe on the existing patent.
An experienced IP advisor can conduct an FTO analysis before significant R&D resources are invested, presenting you with clear options: license the blocking patent, direct your team to design around it, or, in some cases, challenge the validity of the competitor's patent. Secondly, your enhancement may be appealing to customers, and just as you would be infringing on the competitor’s IP, so too would they be infringing on yours, which lays the groundwork for a cross-licensing opportunity. This is but one example of leveraging IP.

Action Plan at a Glance: A Framework for Strategic IP Management

To build a proactive and resilient IP strategy, general counsel can implement a structured plan. This table provides a high-level overview of key initiatives that create alignment, reduce risk, and focus resources.

A Deeper Dive: The General Counsel’s IP Legal Roadmap

This roadmap expands on the action plan, providing a framework for integrating these IP initiatives into your company's daily operations.

1. Conduct quarterly IP reviews. This is a working session, not a formality. The agenda should include pointed questions: Which products are generating 80% of our revenue, and is their core IP adequately protected? Are we paying maintenance fees on patents for products that are being phased out? What is the R&D pipeline for the next 18 months, and have we conducted FTO searches for the top-priority projects? If we identified an infringing competitor today, what combination of patents, trademarks or copyrights would we assert to make their defense as difficult as possible? This turns the review from a legal check-the-box exercise into a strategic planning session.
2. Maintain a trade secret manifest. To be defensible, a trade secret must be actively protected. Your manifest is the primary record of these efforts. It should detail a clear description of the secret, its physical and/or digital location, a strict access list of personnel who are authorized to view it, and a log of the specific protection measures taken (e.g., encryption standards, locked facilities, signed NDAs).
3. Register copyrights. This document tracks your valuable creative assets and their registrations. Key fields should include the title of the work, the author(s), the date of creation, the copyright registration number and date of publication (if applicable), as well as the location of the original digital or physical files. This diligence makes sending a cease-and-desist letter or initiating a takedown notice a straightforward administrative task, rather than a frantic search for proof of ownership.
4. Connect legal with sales and R&D. Your sales team is well aware of your competition. They have their finger on the customers’ interest and are the first to know when a competitor seems to be stepping over the line. But they need to understand where that line exists and know who to contact. Bridge the gap between the front lines and the legal department. Create a simple, one-page digital form that sales staff can use to report competitor activity or potential infringement they see at tradeshows. Request to have a legal liaison attend key R&D planning meetings. This presence enables you to spot IP-related issues early in the development lifecycle, saving significant time and resources later.
5. Use IP for competitive intelligence. This is one of the most underutilized GC tools. Analyzing a competitor’s trademark filings can reveal their branding for a new service months before launch. Tracking their patent filings by technology class can show a strategic pivot toward or away from a market you are in. The same is true for copyright filings. Presenting this data to your C-suite—"Competitor X has filed five new patents related to drone navigation this quarter, doubling their portfolio in this area."—provides actionable intelligence that can inform R&D spending and strategic planning. This intelligence also informs your enforcement strategy, helping you decide when and where to apply pressure.

Why Proactive IP Management Is Essential

Done right, IP isn’t just a legal risk to be mitigated; it’s a strategic asset that powers the business. A proactive and intelligent IP strategy delivers tangible results across the organization.

For starters, it helps prevent revenue loss, but it can also be leveraged into revenue generation. A proactive strategy is your early warning system. Actively managing your IP enables you to catch infringement before it metastasizes, protecting your contracts and hard-won market share.

Proactive enforcement is what gives your IP value. There are no IP police. Under U.S. law, enforcement is crucial to maintaining the validity of trademark and patent rights, and that responsibility rests solely with the holder of the IP. Failing to defend your IP can lead to its dilution or abandonment, essentially donating your innovation to the public domain.

The way you manage your IP portfolio can also boost your reputation. Being known as an IP-aware business that diligently defends its assets deters competitors from even considering copying your work. It also builds credibility with partners, investors, and customers, who, by extension, believe that you will respect and protect their intellectual property rights.

Finally, in the government contracting space especially, IP diligence is essential. Being proactive helps you avoid the headaches and financial consequences that come from regulatory failure, such as being forced to divest a business unit or exit a restricted market after a poorly vetted acquisition.

A Smarter Approach to IP Management

As general counsel, you are a strategist with a job to do. Sometimes, that means leveraging specialized outside expertise effectively.

Choosing external IP counsel should not be a reactive decision made under duress. The right firm is a partner and advisor, not just a legal vendor. Look for one that focuses on business outcomes, not billable hours. Do they have deep experience in your specific industry, such as government contracting? Are they willing to offer predictable, flat-fee arrangements for routine work, such as portfolio audits and monitoring, allowing you to manage your budget effectively?

At Martensen, we help general counsel build lean, effective IP strategies aligned with how their company actually operates. We have worked with companies where more effective monitoring and a robust trade secret strategy have helped them avoid litigation, stay compliant with complex government regulations, and get more value from their long-term R&D investment.

We develop modern IP strategies designed for leverage. Instead of pushing outdated approaches, we observe and understand the big picture so we can help you not only pick your battles wisely but win them decisively. We can audit your current portfolio, watch your competitors, and prepare you for board-level conversations about IP, ensuring you lead with confidence in the moments that count.

By shifting from a defensive to a proactive posture, you transform the legal department from a cost center into a strategic value driver. You protect the company’s most vital innovations and, in doing so, secure your position as an indispensable member of the leadership team.

Contact Martensen To Protect Your Intellectual Property

The unfortunate reality in today’s business world is that your intellectual property is continually at risk of being intentionally stolen or inadvertently duplicated. In either scenario, the cost to your company (and to your reputation as general counsel if you don’t detect the offense quickly) can be significant. However, this risk also represents an opportunity to outmaneuver competitors.

Schedule a free 30-minute consultation with our experienced IP attorneys to learn how we can help you safeguard your intellectual property rights. Together, we can transform IP management from a burden to a strategic advantage.