An intellectual property expert witness assists with court cases that involve copyright law, patents, trademarks, trade secrets, trade dress, or other types of intellectual property (IP). IP is the legal protection of creative works, including films, books, logos, paintings, architectural or engineering designs, slogans, symbols, unique words and phrases, and associated ideas.

Because of the far-reaching implications of IP, it's important to choose an expert witness with experience in your particular industry and field. IP expert witnesses most commonly specialize in a field such as technology development and manufacturing, software design and engineering, computer and electrical engineering, and other fields that engage in creating and marketing products and services.

Litigation areas that may involve IP include but are not limited to copyright infringement, patent licensing and analysis, trademark infringement, patent validity and infringement, royalty payments, brands, trade secrets, and breach of contract. Technology fields particularly rely on the value of IP because this industry is fast-moving and very competitive.

Expert Witnesses in Patent Litigation

When involved in patent litigation, a company must identify an inside expert with intimate knowledge of how the technology in question affects the company's business. This internal expert can, in turn, seek external expert witnesses. Developing a strong case involves finding an appropriate expert witness, preparing this individual thoroughly for the trial, and using his or her opinions in your counsel's litigation strategy.

The purpose of an expert witness is to teach the jury and the court about topics beyond their scope of experience, such as the technology involved in the case and legal concepts associated with IP. Your expert witness needs extensive knowledge and experience as well as the communication skills to argue effectively and persuade the jury of your point of view.

When an expert witness is found, it's important to scour his or her former articles and testimony for material that may contradict his or her testimony in this case. This is very time-consuming depending on the volume of the person's work, but it is a necessary step because the opposing side will certainly bring up any contradictory statements in their attempts to discredit your expert.

If this search is successful, the next step is to give the expert a letter of engagement that describes the scope of services and sets expectations. It is also important to control the flow of information by keeping track of documents that have been provided to the witness. 

Finding an expert witness early on in a case can help bolster and shape the strategy for litigations. He or she can evaluate the strength of a case and recommend strategies based on experience. He or she should extensively research the technology in question and the details of the case immediately after the engagement. However, it's important that the expert does not finalize his or her conclusion until they receive a fully developed factual record

After the initial phase of research and fact-finding, the expert witness produces an expert report that must be submitted to the court. This details opinions that he or she will express during the trial. The Federal Rules of Civil Procedure maintains strict requirements for these reports. The expert cannot testify if these are not followed. Rules include the report's submission at least 90 days before trial along with data supporting the opinions in the report, a list of exhibits, a list of all publications the witness has written in the past 10 years, compensation information, and a list of previous testimony given.

While the attorney may assist with the expert report, the witness is ultimately responsible for the opinions expressed.  His or her findings become seen as biased if undue attorney influence is found. 

After submitting the report, the expert witness gives a deposition on its contents. It's important to prepare the expert thoroughly, keeping the following important advice in mind:

  • Allow plenty of time to fully prepare the witness.
  • Always assume the expert requires preparation for the first time.
  • Make sure he or she has reviewed all case materials before deposition.
  • Make sure that he or she is aware of the legal impact of statements made during the deposition.

If you need help with finding an intellectual property expert witness, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.