Corporate IP Counsel: Advocate of IP Alignment in the Enterprise
Editor’s Note: Bob Crawford has spent the bulk of his career as in-house corporate IP counsel for companies like General Electric and Alstom, where he worked closely with the innovation teams and corporate leadership to maximize the value of each company’s IP portfolio. Over the next several articles, Bob will share his experience 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.
As IP counsel we are all aware of the importance and value of a company’s intellectual property. We are trained to identify and protect a company’s inventions, trademarks, copyrights, trade secrets and confidential information. While IP counsel may put in place comprehensive IP processes and policies, this effort is simply not enough. To provide a truly comprehensive IP aware environment within a company, IP counsel must develop a corporate culture where every employee is mindful of the importance of intellectual property to the company and understand the steps each must take to protect its IP. It is the responsibility of IP counsel to assist every employee to achieve this goal.
One key step to raise IP awareness within a company is for IP counsel to give presentations, and publish policies and best practices. For instance, when introducing new or updated company-wide IP policies, a presentation with a large audience is beneficial to quickly get the information out to everyone. Alternatively, a video presentation could be produced and made available to everyone, however, this type of presentation lacks a personal connection between the employees and IP counsel. When practical, presentations with smaller groups, such as the technical team, are ideal. These presentations may be conducted in a casual “lunch and learn” environment or in small groups. The subject matter may include gaps in their IP knowledge or understanding that IP Counsel has identified or an important change in IP law or internal policies specifically relevant to their role as potential creators of IP.
While presentations are important, IP counsel’s work does not stop there. IP counsel should take a personal interest to integrate into all facets and organizations of the company and preach these best IP practices to instill a natural desire and understanding of the value of IP. IP counsel’s ability to connect with individuals and explain intellectual property to people at their level as it specifically relates to their roles is key to spreading IP awareness.
The opportunities to build IP awareness among the technical team come in several ways. First, IP counsel should develop a collegial working relationship with at least the key contributors of the technical team by meeting with them regularly to discuss the technical progress of their development projects. These meetings provide an opportunity to discuss innovations and IP protection specifically relating to their project. More importantly, these meetings develop open communication with individual members of the technical team should any IP questions arise. These meetings and relationship with each technical team member also provide the added benefit of giving you a better understanding of the technology being developed, what stage of the development a project is at, and any potential disclosure of confidential or patentable subject matter.
Participate in the Innovation Process
Second, the IP Counsel should inject themselves in the development process. For example, IP counsel may participate in the design review of a development project. IP counsel may simply participate as an observer. While this may be helpful to improve your visibility with the technical team and learn about the progress of ongoing projects, IP counsel should take a more active role. One way is to participate as a member of the design review team evaluating any potential IP issues. The IP counsel may also participate as a member of the design team and present the IP status of the project to the design review board. Actively participating in the design review process raises IP awareness and reinforces the importance of IP with the technical team. Design review participation prevents IP protection from being an after-thought. In another instance, technical brainstorming sessions or IP gap reviews may be conducted to identify new intellectual property to pursue.
Recognize IP Achievements
Third, recognition of inventors for granted patents is an important way to reward an inventor in the development of valuable IP, thus encouraging them to take a proactive role when it comes to intellectual property. Recognition for an inventor may be in the form of financial compensation, a plaque displaying the first page of the patent, and/or an award ceremony to recognize the inventors. A company may also display plaques showing issued patents in a public area. Such a display would affirm to everyone the importance and pride the company takes in its intellectual property.
While it is important for IP counsel to take the necessary steps to mechanically protect a company’s intellectual property by filing patent applications, negotiating licensing and confidentiality agreements, and managing both the IP portfolio and outside counsel, it is incumbent upon IP counsel to develop a more active and personal role by integrating and building relationships with the technical team. Only then will true IP awareness and appreciation among the technical team be achieved.
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.