Corporate IP Counsel: Advocate of IP Alignment in the Enterprise – Educating R&D About Intellectual Property
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.
The R&D team are the individuals within your enterprise who, on a daily basis, handle the most critical confidential information when it comes to your company’s intellectual property. It is important that these team members appreciate the significance of this material, how to handle it, and understand the steps necessary to protect any innovations.
As in-house IP counsel, it is up to you to help raise the technical team’s intellectual property awareness. These valued IP stakeholders look to you to educate them on various aspects surrounding these innovation assets, and to disseminate the company’s policies and procedures you’ve helped devise to capture and protect intellectual property while in its development phase.
IP Awareness Sessions for Your R&D Team
While all-points memoranda and company-wide presentations can quickly spread the word to increase IP awareness to everyone, smaller IP education sessions with the technical team should be conducted on an ongoing and regular basis to target awareness at this critical phase in an asset’s development. Establishing a regular cadence of these more focused meetings can help build IP awareness into the culture of your R&D department.
If you schedule out your IP education sessions over a period of weeks or months, you can plan ahead for what topics you’ll present and work toward building on prior knowledge. There also may be times when a session is conducted for a particular purpose, superseding a more general curriculum. For example, meetings may be held to inform the technical team of changes in corporate policies or procedures, updates to patent law, or to address specific issues that may arise from time to time. Either way, having time blocked out for IP awareness allows you a well-organized forum to advance your company’s IP strategy among the people who work to develop these valuable assets.
Topics to Promote Intellectual Property Awareness
One approachable way to structure your IP awareness sessions is through “lunch-and-learn” meetings, which provide the opportunity to discuss the finer points of IP protection and promote in-depth discussions when needed. Such sessions are most productive when limited to groups of 20 or fewer individuals to promote an intimate, casual setting. These discussions should be interactive with free-flowing questions and answers. When appropriate, consider recruiting a member of the technical community to present a portion of the topic, such as a patent engineer or a group leader.
Following are a few suggestions for topics of discussion with your R&D team that will help promote important facets of a strong IP protection strategy.
Review the Terms of IP Agreements
A very common and useful topic for a “lunch-and-learn” may be to review an individual’s obligations under the non-disclosure and IP ownership agreements that each employee signed when hired. This subject matter may be covered soon after being employed, periodically during employment, prior to exiting the company, or all of the above. This meeting provides an opportunity to explain and reinforce what information is considered confidential, what is considered a trade secret, how to handle this information internally, and when confidential information may or may not be disclosed to third-parties.
The terms of an individual’s IP agreement seem to raise the most questions and confusion. Many fail to appreciate that generally the company not only owns everything produced by the employee, including work product, designs and inventions, but may in some instances also own any designs or work product produced on their own time when using the company’s equipment, information, or anything related to the company’s business. In addition, upon exit from the company, the worker is obligated to return all information in any form back to the company with a continued obligation to execute any documents necessary to perfect IP ownership with the company after they leave.
How to Protect IP with Invention Disclosures
Another topic may cover the fundamental laws and steps of patenting an invention in the context of development work. For example, an inventor would benefit from knowing about each section of a patent, particularly the requirements and best practice of describing the invention and understanding that the claims define the patent. Such a discussion would also cover how the claims define how a third-party infringes an invention. This understanding of each part of a patent prompts inventors to think about their technology in a broad context and to focus on and clearly define their invention, thus resulting in a stronger and comprehensive patent.
Best practices for drafting invention disclosures and the internal review process to obtain approval to proceed with the filing of a patent are also very important topics to educate your R&D colleagues about. When covering these, you’ll want to be sure to discuss when an invention disclosure should be submitted, what level of technical detail is needed to complete the disclosure form, and how to prepare for the invention disclosure meeting conducted by a patent review committee.
This topic inevitably raises the question, “How do you know when something may be patentable?” The simple answer to this question is, “When you discover a solution to a problem.” Another common question is, “When do I submit an invention disclosure for review?” The answer, “As soon as possible – and please don’t wait until the paper is about to be published!”
Understanding Policies Pertaining to Third-Party Development Collaborations
You might use a “lunch-and-learn” session to communicate policy and best practices when collaborating or seeking to collaborate with third parties. First and foremost, the technical team must communicate to IP counsel and the legal team their desire or plans to discuss technical matters with a third party, so an appropriate agreement may be entered into before disclosing or receiving any technical or confidential information.
This meeting may also be specific to an agreement currently in place to cover important IP terms of the agreement. For example, the technical team must be informed as to what information may be provided to and received from the third-party, and more importantly, what information cannot be disclosed. The team must also be aware of how the information must be marked or provided. The terms of the agreement may include very specific procedures and require very specific marking or notice when sharing information, such as marking information to denote background or foreground IP.
As with any company, cultivating IP awareness through regular meetings with the technical teams is critical for a successful business. These intimate “lunch and learn” type meetings provide an opportunity to teach the finer points of handling and protecting your company’s IP, while developing a relationship with the team members to promote open and meaningful communication with the end goal of securing and developing intellectual property.
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.