So, you want to be chief IP counsel, eh?

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1 So, you want to be chief IP counsel, eh? Corporate heads of IP need a wide range of skill sets that go far beyond being a talented patent attorney By William J Coughlin How can you tell whether you would make a great chief IP counsel? And if you would be the best choice for the next chief IP counsel, how can you demonstrate this to the powers that be? In short, there are a variety of different roles that you must be able to master. You will need to be ready to face a number of common, but tough situations as chief IP counsel. This article will help you to determine whether you can measure up to your ambition. Leader The foremost role of any chief IP counsel is to be a leader. This is easier said than done, as leadership is not generally a course that is taught in law school. While many books have been written on the topic of leadership, the essence is about change. Great leaders can inspire their teams to achieve goals that few thought possible. As the company s IP leader, you will need to create a compelling vision of the future relative to intellectual property, develop a strategy for getting there and energise your team. Your strategy should be relatively simple and memorable, as an overly complex plan will be difficult to implement. If you cannot convey the plan on a single page, neither team members nor management will readily understand or remember it. Of course, your IP strategy must also align to your company s business plan and s. In Ford s case, our IP strategy aligns well to the company s ONE Ford plan. Risk taker Successful IP chiefs are careful, but daring risk takers. I have lost count of the number of times that it felt like I was betting my job on a decision I was making or a position I was taking. For example, during my tenure, Ford filed its first patent infringement lawsuit in the United States (using design patents when no automaker had been able to enforce a US design patent in more than a half century). This patent case turned out so successfully that the opposition now has bills pending in Congress to stop Ford from enforcing its design patents against copied parts. If you are not willing to put your job on the line to do what is in the best interests of your corporate client, the job of chief IP counsel is not for you. Teacher Everybody has to retire at some point, so an important part of your job will be to teach your colleagues everything you can and just about every situation can become a teachable moment if you really care what happens to your team members and company after you have passed the baton on to a successor. In my case, I have used my role as an adjunct professor to sharpen my teaching skills and stretch my legal knowledge. Teachers also spend a considerable amount of time grading papers, and so do IP chiefs. While you may not care whether the grammar you see is perfect or whether the document is suitable for framing, your general counsel probably does. As chief IP counsel, you will ultimately be responsible for the work of your team members and you will not be doing them any favours if the general counsel is less than impressed with their work product. Dealmaker There are bound to be several times during Intellectual Asset Management November/December 21 11

2 Figure 1. Ford IP strategy Enhance business strategy Strengthen the business Influence technical direction Build profit from alliances Preserve brand integrity Develop IP policies Enforce IP & defend IP attacks Investigate IP infringement Resolve IP threats & disputes Litigate IP when necessary Integrating legal, technology and business functions to drive competitive advantage Legal Business & tech Help expand & sustain competitive advantage Business Technical & legal Legal & tech Encourage innovation & ensure freedom to operate Enable access to technology Clear products & design around IP Negotiate IP rights Manage ideas & reward programmes Support focused brainstorming Protect IP strategically Build a balanced patent portfolio Obtain trademark registrations Obtain copyright registrations Secure trade secrets Support needed IP legislation Leverage IP for optimum Integrate IP into the business plan to stay a step ahead Use IP in lieu of cash for transactions License IP for royalty income and/or cost reduction any significant business negotiation when seemingly insurmountable problems will arise. In such situations, it may be up to you to discover a better answer and find a way to get needed business deals and settlements done on reasonable terms. At times you will need to counsel your client to step back from the negotiating table; at others you will need to surprise the other party by going the extra mile often in the same deal. And remember, not every executive will appreciate the vital role that intellectual property plays in achieving and sustaining competitive advantage. So you may find yourself negotiating inside as well as outside of the company. Innovator You can and should have an influence on innovation in your company. For example, Ford s IP team launched its own creative facility for holding focused brainstorming sessions. We call this facility the Innovation Acceleration Centre and all teams in the company can use the centre for free, as long as they come to innovate (eg, new vehicle features). We encourage everyone to think innovatively even IP chiefs. In my case, the genesis of an environmentally green invention stemmed from the rejection of several innovation suggestions submitted online by Ford employees for a fuel economy mode of vehicle operation. I noticed that a senior Ford engineer had reviewed several such innovation suggestions with the same recommendation that they not be pursued. In preparing for a meeting with this engineer regarding these suggestions, I started drawing connections to the engine control module on a whiteboard to illustrate how Ford s IP team could help to inspire invention through a brainstorming session. It was at this time that the concept of providing coaching feedback through the accelerator pedal was conceived, as it would not require each vehicle to be exhaustively engineered with an additional powertrain calibration and the full performance capability of the vehicle would remain available to the driver too. We eventually tested the invention in a Ford Escape hybrid electric vehicle and showed that average (moderate) drivers could improve their real-world fuel economy by 1%. US Patent No 7,63,228 was granted on the invention and it has been licensed for aftermarket implementation through the use of the OBD-II diagnostic port that is provided below the steering wheel in modern passenger vehicles. Ford s IP team has also sponsored and funded idea websites, innovation challenges (eg, Model T for the 21st Century), pilot projects (eg, a prediction market) and research projects (eg, emotive technology). We even co-created and spun out IP management software known as Anaqua (www.anaqua.com). This software was good 12 Intellectual Asset Management November/December 21

3 enough to be licensed by Microsoft, Coca- Cola, Eastman Chemical and Kimberly-Clark, among other IP-centric companies. Part of my contribution to the development effort was to create a matrix so that a patent attorney could quickly determine whether to file a patent application on an invention. This matrix converts a normally complex decision into two clicks of a mouse for the attorney. In short, the arithmetic of these two clicks needs to be greater than zero to permit filing. The Anaqua software also allows a licensee to replace the terms used on the matrix to meet the needs of the business. Entrepreneur An IP chief today needs to be able to recognise and help to capitalise on the business potential of the IP assets created across the enterprise. Some IP assets will need to be developed further or combined with the IP assets of others to achieve commercialisation with sufficient speed and efficiency to succeed in the market. Gone are the days when a single company could excel at every operation needed to introduce a new product. At one time, raw materials such as iron ore came into one side of the giant Ford Rouge plant and cars were driven out of the other side. But today, Ford no longer designs, engineers and builds every component that goes into its cars and trucks, even though Ford is again setting benchmarks for vehicle quality in the auto industry. As an example of how companies need to work together relative to intellectual property, Ford is helping to lead an effort to create a vibrant market for automotive innovation. The graphic on page 14 illustrates the combination of elements that are deemed necessary (this effort was recently highlighted in a story by the New York Times). Sage As IP chief, you will be expected to be an expert in every facet of IP law and to be able to answer intractable IP questions on the Invention evaluation matrix Evaluation instructions Greg Johnson, your evaluation is requested for Invention number (No disclosure available) When you have finished, click the Save button Back Save High must have n/a n/a n/a Broad Drives key features Specific claims with broad application Internal Mainly external Regulatory requirement Specific claims with narrow application Claim coverage Narrow Value not determinable Difficult to patent No real Unpatentable None Low Some but difficult to quantify Broad interest High Block to competition Easy to detect Virtual product teardown Actual product teardown External outside testing needed Not detectable Litigation required External Ease of detection Intellectual Asset Management November/December 21 13

4 spot. More than just keeping up on new case law and pending legislation, you will need to anticipate how IP processes will need to evolve and know what relationships need to be built inside and outside of the company. Given the number of s that you will receive every day of the year, your advice will need to be quick and clear. And don t forget to leave time to keep up to date on changes in your industry, the technologies relevant to your industry, litigation procedures and internet-related law. You will need to know all of that, too. Figure 2. Build trust and speed Build trust and speed: 1. Negotiation norms 2. Standard contracts 3. Deal database Post feedback? 4. Intermediaries 5. Posting alerts Funding sources Pro associations National laboratories Universities Research Tech showroom Suppliers Automotive innovation market Automakers AutoHarvest neural net Coach You will need to hire the right team members, keep them motivated under adverse circumstances, help them to develop their skills and, yes, prune the team, just like any other coach has to do to deliver the performance demanded by the owner. Whether we like it or not, the bar for that performance needs to rise year after year. In that process, you will need to embrace and support whatever HR performance evaluation system is currently in place. But I have found that the following personal standard works well under any HR system: exceed expectations and bring out the best in those around you. With respect to hiring, Ford s IP team is piloting a hiring process with one of its closest IP law firms, Brooks Kushman. Newly minted law school graduates are being hired by the firm with a two-year contract. They will work three to four days a week at Ford and be trained by both the firm and Ford. At the end of the two-year period, these now well-tested patent attorneys may be hired by Ford (preferably) or by the law firm; or worst case they may need to pursue excellence elsewhere. Manager If bureaucracy frustrates you, the job of chief IP counsel is not for you. Your goal should be to figure out how to use whatever bureaucracy you encounter to your advantage. For example, I asked the general auditor s office of Ford to audit our IP operation, which is an intensive, multi-month process. While I am sure that some of my team members considered mutiny, any operation will ultimately benefit from having its processes tested for weaknesses or non-compliance. In our case, we used this opportunity to improve a number of processes. Additionally, one of the most important roles of a manager is to make sure that the metrics of the operation are right. If your key measures are the cost of obtaining patents and the number of patents issued, you will Ideas Engineers Concept Prototype probably end up getting lots of cheap patents with variable quality. Simply paying more is not the best answer, as the price of a patent application is not necessarily a guarantor of its quality. The chart on page 15 illustrates a standard six-sigma way of determining what metrics might be needed for an IP team (with a bit of tuning to follow Ford s IP strategy). In any event, you will need to tailor your set of metrics annually (at least) to encourage continuous improvement and adjust to the current realities of the business. For example, at Ford, our internal metric on patent quality led us to create targeted rewards that have resulted in an increase of quality for all patents, even though only a subset of patents will ultimately qualify for those awards. Common, tough situations The point of having the skill-set above is that it allows you to deal with the kind of situations that come up time and again in a business environment. A couple of the regulars, and potential responses to them, are described below. Cutting the budget Assume that you have just been informed by the general counsel that you will need to cut the IP budget in half and/or significantly reduce your in-house IP team. How would you respond to such news? For better or worse, I have had to study up on the five Inventions know-how Products and/or services Licence 14 Intellectual Asset Management November/December 21

5 Figure 3. Be careful what you measure Six-Sigma IP processes Customers Corp strategies Technical direction Inventions Ideas Clearance requests Agreement requests IP threats & lawsuits Questions IP team Patents Legal colleagues Inputs Trademarks Outputs Outcomes Employees Copyrights Trade secrets Licensees Strong brands IP agreements Consumers Product freedom Commercialisation Copying avoided IP enforcement ROI for IP Internal process metrics A IP encouraged No of inventions IP protected No of patents No of TM reg IP leveraged royalty income cost savings IP enforced Enforcements Threat costs The enterprise PD, Mktg, etc Metrics/targets need to be tailored to fit the need External team metrics Enhance business strategy B Company metrics C Ford s IP function has gone from being a significant cost to becoming an effectively costfree investment that delivers increasing income over time stages of grief (denial, anger, bargaining, depression and acceptance) a number of times as IP chief. With respect to personnel reductions, my response has been to work towards finding affected employees a great place to land as soon as possible. As for budget cuts, these can be an opportunity in disguise. The ideal answer is to use a budget cut to find a better way to work, rather than simply deciding to do less of something still believed to be needed. At Ford, we view intellectual property from both a business and legal perspective. Importantly, Ford s IP team has been empowered to reinvest a portion of the income it makes. This has helped the team to address budget challenges. As a result, Ford s IP function has gone from being a significant cost to becoming an effectively cost-free investment that delivers increasing income over time. In fact, even though 29 was possibly the worst year ever in the auto industry, it proved to be the most profitable one yet for Ford IP. While no in-house IP team member will want to hear this, you can indeed deliver significantly greater results with far fewer resources. Creativity and goodwill make all the difference. For example, when we needed to save money on professional seminars, I asked team members to start substituting for me at meetings of the Intellectual Property Owners Association (IPO) and the Association of Corporate Patent Counsel (ACPC). This cost-saving measure had the added benefit of deepening the team s involvement with IPO and enabling them to network with current and former IP chiefs through ACPC. We have also successfully outsourced and offshored IP work to meet budget tasks. Today, all of Ford s trademark work is centralised with Brooks Kushman. Even though the proposal to outsource Ford s entire trademark team was not exactly warmly received, the team has thrived at the firm and everyone has worked together to achieve the savings needed. With respect to offshoring, we decided to build an IP team in India by hiring and training recent engineering graduates with a desire to become patent attorneys. This was both the lowest-cost and most positive alternative, as Ford will need an IP team in India to support its growing business there. We also achieved an increase in the quality of our patent searches, which was the first work assigned to our new Indian IP team. Working with competitors How should you handle disputes with competitors? My approach has been to treat everyone, including competitors, as I would hope to be treated. This is hardly giving anyone a free pass. It means not only that you treat others fairly, but also that they see that you are treating them fairly. This is a tough standard to achieve, but getting there Intellectual Asset Management November/December 21 15

6 Action plan A The Ford IP team's Innovation Acceleration Centre will pave the way for future deals. Even if you believe that a competitor is wilfully infringing a dozen of your company s patents, the odds are that a settlement agreement will eventually need to be reached, and taking undue advantage of or embarrassing your colleagues at competitors would be counterproductive. The odds are also pretty good that you will find yourself standing in their shoes one day, defending against their patents. Set yourself apart Before reading this article, you may have assumed that you would make a great chief IP counsel because you see yourself as an exceptionally talented patent attorney. But it should be clear that there is much more to the position of chief IP counsel than just being an accomplished attorney. While you may not yet have had enough experience to demonstrate all of the qualities needed to be a successful chief IP counsel, you should strive to practise as many of them as you can and in the process, set yourself apart from other talented patent attorneys who might be thinking that they could easily do the job too. For example, consider writing an article that would demonstrate that you can master a number of the roles required of an IP chief (eg, Obviousness after KSR v Teleflex a corporate perspective, IAM issue 25, August/September 27, pages 21to 24). Along the way, you will learn whether the job of IP chief will be a natural fit for you. If it is, company executives will come to see you as a trustworthy leader and your team will come to appreciate that you are genuinely seeking to bring out the professional best in each of them. You will have fun on the job; and, with a bit of a twinkle in my Irish eyes, I would finally like to express the wish that you too may some day have the opportunity to write an article like this for future generations of chief IP counsel. William Coughlin is president and CEO of Ford Global Technologies, LLC In order to become a corporate IP chief, it is important to develop the following skill sets: Leader a strategist who can inspire remarkable achievements by IP and business teams. Risk taker a careful, but daring litigator who is willing to make bet your job decisions. Teacher a mentor who is constantly passing on knowledge that the team will need. Dealmaker a skilled negotiator who can help to get the big deals done, and done right. Innovator a creative engineer who can influence innovation by and with the business. Entrepreneur an executive who can see and capitalise on IP/business opportunities. Sage a trusted counsellor who can provide wise advice to management on any IP issue. Coach a great judge of talent who can bring out the professional best in team members. Manager an expert in IP processes and metrics who can build an effective IP factory. These will enable you to deal with decisions revolving around issues such as: Cutting the budget use a reduction in budget to find a better way to work. If possible, secure the ability to reinvest a portion of IP royalties received by the IP team to responsibly grow the business. Working with competitors treat everyone, including competitors, as you would hope to be treated if you were standing in their shoes. 16 Intellectual Asset Management November/December 21

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