Corporate IP Counsel: Advocate of IP Alignment in the Enterprise – Building Relationships with R&D
Editor’s Note: Bob Crawford continues, in this series, to share his experiences and insights into how Corporate IP Counsel can be facilitators and leaders in creating a culture of IP awareness and alignment for companies to best leverage their valuable IP assets. Part one of this series can be found here.
A symbiotic relationship between corporate IP counsel and members of the technical team is essential to protecting and capturing strong intellectual property rights from the development efforts of the company’s designers, engineers, and scientists. IP counsel would do well in building this relationship through regular interaction with the technical team. Such meetings are more than just opportunities to discuss technical issues or updates relating to a particular project, but serve as rich opportunities to develop a trusting and comfortable relationship with each individual technical contributor. Only then will the communication between IP counsel be honest, open, and collaborative to enable everyone to have a better understanding of how to protect and develop strong intellectual property.
Become Part of the Team
IP counsel should meet regularly with various members of the technical team in order to build strong relationships with the talented innovators, inventors, and engineers who serve as the engine of innovation for your enterprise. While these meetings may be formally scheduled, I have found a casual follow up with key individuals is the most productive way to strengthen these relationships. This type of meeting does not require an agenda or reason to talk but is simply a means to engage with them for an update on their project or on a personal note. Many times, these meetings blossom into deep technical discussions.
IP counsel may also consider regularly visiting the area of the technical team or the labs and randomly talking with people that are available. By doing this, I often found that a conversation with one person will likely lead to others also joining in, creating a technical “water cooler” moment. These conversations in the lab or technical team’s area also provide an opportunity to review their designs on paper or white board, or maybe even review the progress of the prototype being built in the lab. It was always my experience as an in-house IP counsel that, by showing up in their space, others sought me out to discuss matters which they likely would not have reached out to me to discuss had I not come to them.
Opportunity to Learn and Teach
Over the years it has become obvious to me that technical people enjoy discussing their work and the technical challenges they overcame in the process. IP counsel should take this as an opportunity to learn in greater depth the technical details of the design or technology of their latest innovation. Such interactions will provide a much better understanding of the invention than just that which was described in an invention disclosure.
Any meeting with a member of the technical team is also an opportunity to teach them the finer points of the importance of patent protection and the patent process. One important lesson is the need to maintain confidentiality of both the development process and the design itself until the intellectual property of their project can be protected. As noted, innovators enjoy sharing their accomplishments with others, so these meetings enable IP counsel to continuously reiterate the importance of confidentiality and get ahead of any public disclosures, e.g., publications or presentations at conferences.
Another bit of advice I would continually reiterate with the technical team is that their job is to design and invent, not to determine if something is patentable. R&D folk seem to have a bias in thinking that much of their work is not new. IP counsel should often remind them that their job is to invent, and our job is to determine what is patentable while encouraging them to file more invention disclosures. I would often say, “if you solved a problem, the solution may be patentable.”
Technicians are focused on their technology, and not always on the patent process or how patents protect the basic rights of their company. A common misunderstanding is that many believe a patent gives the patent owner the right to practice the claimed invention, rather than the right to exclude others from practicing that invention. To illustrate this concept, I would often rely on a favorite example of mine – a patent owner’s rights in a patent for a pencil having an eraser at one end of a pencil, as compared to a patent owner’s rights in an earlier-issued patent for a pencil without an eraser. The patent owner of just the pencil may manufacture a pencil but cannot manufacture the pencil with an eraser on one end. In contrast, the patent owner of the pencil with the eraser at one end cannot manufacture or sell their patented invention at all. This example provides the basis for a robust discussion on the concept of cross-licensing.
Demonstrate Your Technical Strengths
Over the years I have learned some members of the technical team do not appreciate that all IP counsel have a technical degree, real world technical experience, or both. Earlier in my career I was drafting a patent application and concluded the description was technically incorrect and suggested a solution. After reviewing the disclosure, the inventor agreed with my solution. His comment to me was “You really do know your stuff.” This interaction went a long way in establishing my technical abilities and building trust with my R&D counterparts.
IP counsel may also demonstrate their technical strengths when discussing the latest project being developed by asking probing and insightful questions. For example, IP counsel may ask questions or suggest improvements and alternatives to force an inventor to think outside of the box. Establishing such a level of technical credibility with the R&D team builds an open and confident relationship with them.
Engineers, scientists, and designers are major contributors to the development of intellectual property within the enterprise. As the advocate of your company’s intellectual property, IP counsel should develop a close, open, and working relationship with each member of the technical team. IP counsel can achieve this by actively reaching out to and frequently interacting with the technical team to teach, learn, and demonstrate an interest in the work being developed. When seen as a valued and respected part of the R&D team, IP counsel will be agents of IP awareness and appreciation throughout the organization.
This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.