What Would You Say to Research and Development Types About Patents?

This Kat has been "away on assignment", as they say, and settling back into his frenetic version of routine has proved to be a challenge. We're getting there, though.

As periodically happens, I was recently called upon to speak with R&D types about patent law and practice principles, this time at the susbsidiary of a major multinational company. The challenge, as always, is how to pitch the presentation. After all, the company maintains separate patent counsel to deal with the drafting of patent applications. On the other hand, we are viewed as providing "value-added" regarding such issues as licensing and commercialization, ownership (think: independent contractors and university research support), litigation and strategy.

Maybe yes, maybe no, but that still leaves the question of how to play to our professional strengths before this audience, while still being professional useful for them -- and me (I stay completely away from the tricky HR issue of the rights and remuneration of employee-inventors.)

One way by which I have tried to address this topic is to devote time to the question of "why are patents filed"? There is, of course, no single set of answers. Lurking behind this question is the overaching issue of whether to view patents (and intellectual property more generally) as a more of a top-down, or a bottom-up matter, within a particular organization.

For the present, consider the following list of posible reasons why patents are filed.
1. The company has no overall policy and patents are filed at the division or similar level without any overall strategic managment or control.

2. Patents are seen as protection against competitors.

3. Patents are used as both signals and mis-signals,information and disinformation, about the company's intentions.

4. Patents are seen as providing potential licensing revenues.

5. Patents are intended to enable the company to engage in effective cross-licensing activity.

6. Patents are intended to prevent competitors from entering into an area, even if the company itself has no intention of entering that area.

7. Patents are a form of lottery, where there are potentially huge rewards for successful litigation.
8. The "anti-patent" alternative allows a company to publish contents and results that have the effect of creating a patent-free landscape.
These various reasons are presented and a discussion ensues.

In placing empahsis on the question of-- "why does a company patent?"-- before an R&D- focused audience, there are several assumptions, First, some of the R&D audience will move on in their careers to managerial positions in which they may be called upon to take part in discussions regarding patent strategy. Becoming familiar with the issue may make them more valuable for the company going forward; indeed, showing an interest and competency in this kind of question might enhance one's move to a managerial position, if the employee seeks to do so.

Secondly, carrying out at least some of the reasons why patents are filed in a company may require the active involvement of these R&D types. Their involvement can take one of two possible forms. If the relevant managerial personnel is aware of the need for such involvement, then empowering R&D tyypes to take part in such activities fits in seemlessly with overall managerial goals. However, if the managerial superiors are not fully aware of the potential need for input from these employees, such empowerment may well lead to better decision-making by the company, if the input from the R&D types is allowed to percolate upwards.

There is another risk here, which is more my own. There is not necessarily any unity of interest between R&D types and other job types within the company with respect to patent activity. These divergences include not only senior management versus R&D, but also involve marketing, financial, product development and HR. In raising this question of the question of why to patent, one inevitably alludes to, if not openly highlights, potential areas of disagreement or conflict with respect to the company's patent practice.

As with the question of why a company patents, here too there is no single answer how I can best navigate between these various points of potential friction. One thing is for sure--there is probably no other situation in my IP practice in which I am less uncertain about who exactly "is my client" in such circumstances.
What Would You Say to Research and Development Types About Patents? What Would You Say to Research and Development Types About Patents? Reviewed by Neil Wilkof on Friday, June 17, 2011 Rating: 5


  1. What about a patent is filed because an invention has been made that the company is going to invest in bringing to market.

    Or is that naive?

  2. Following on from Filemot, one of the main reasons for start-up companies filing patent applications is so that they can wave a piece of paper under the noses of potential financial backers to show that the core inventions of the company are patent protected (before they abandon them because they do not have sufficient funding for paying the attorney fees).

  3. I would start by asking them two questions:
    "What does your company make?"
    "What do you make?"

    Obviously, if they are R&D types working for industrial companies, the two answers will be quite different. Starting from here, I'd explain how the fruit of their labour is also a valuable product on its own, a product that can and should be exploited in a variety of manners, including through patents. I'd explain how the patent system works, what alternatives there may be to filing a patent application in various circumstances, and how the patent may then be exploited (protection, licensing, securitization, etc.) Finally, I'd end up giving a summary of which particular pitfalls to avoid when intending to file a patent application, and how to disclose the invention to the patent drafter .

  4. I have to disagree with Filemot...the scientists don't care about this at all...

    I recently joined a large company and have been tasked with increasing IP awareness of the scientists...having presented several seminars, I have to say that getting people to show up is the main problem. Why?

    Having canvassed opinion, most of the junior scientists feel that IP and patents have no relevance to their day-to-day work and they therefore have no need to know about IP. Essentially, they believe that the science is more important and IP is just a department that does something elsewhere unconnected to them.

    I experience the opposite problem with senior scientists...they believe that they know all there is to know about IP and patenting and therefore don't need to attend.

    If you manage to find a way to excite scientists about IP, please let us know - it's something I'm struggling with! It's not the content of the seminars, it's getting them to even want to show interest and attend that is the issue.

  5. Disillusioned doesn't need to worry about the attitude of his/her company's scientists, because he is an in-house attorney. He has responsibility for protecting his compnay's IP, and not the scientists. He can control what is patented, what is published, what is worked on. He can pull rank over junior and senior scientists in the interests of the company.

    By acting competently, knowledgably and with authority, he can bring the scientists round to his way of thinking, because they will come to respect his opinion. They will either learn or re-learn the right way. It's a challenge that should be enjoyed, because success provides great satisfaction.

    The problem for companies that have outside counsel only is that they are much more difficult to steer down the correct path. If the senior people know all there is to know about IP (i.e. nothing much of value and more than enough to make them dangerous) then they will fail. Just be thankful for their business, while they last.

    With in-house counsel being so much more valuable, it begs the question as to why the financial rewards are significantly greater in private practice. It isn't necessarily a case of private practice being overly expensive, but probably more to do with the way UK businesses operate with regard to remuneration of their employees. Management is always the most highly rewarded. Highly competent lawyers come further down the tree and the scientists are at the bottom.

  6. @anonymous 9:24 pm - that's set my weekend off a treat...I nearly died laughing!

    I'd like to know where this idealised view of in-house counsel comes from. In my company, the scientists regard IP with disdain and push to publish everything! There seems to be no understanding that they work for a company.

    In fact, being in-house counsel I feel like I'm trying to herd cats most of the time...if only it were as you described, like this:

  7. There are some important words that you missed, industry boy - "By acting competently, knowledgably and with authority".

    Industry clearly isn't for you.

  8. It is the role of an attorney to protect the interests of a company's shareholders. If the shareholders are the scientists who are ignoring Industry Boy's advices then that is their right. Otherwise, Industry Boy is failing in his duties. Once he becomes 'Industry Man' he may be more successful, but it doesn't look like his voice is going to break any time soon.

    I get the feeling that Industry Boy is a lone attorney and probably got his job because the scientists saw him as someone to whatever they wanted and not what the company needed. I have come across many firms who have failed because of this weak combination. The cause of the problem is a combination of ignorance by UK businesses (management and scientists/engineers) and the woeful state of the service offered by private practice and the severe shortage of skills due to a lack of industrial and commercial experience.

    So, Industry Boy, you are not alone, but are one of the sheep.


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