Best Practices in IP 2013: a conference report 2

Following Ruud Peters' talk, a panel of business leaders offered their own perspectives on how to build and manage an IP portfolio, in a session moderated by Einav Zilber (Applied Materials Israel).

First up was Eric J. Siecker (Caterpillar), who emphasised the sensible need for an IP strategy to match the business.  Whether obtaining, exploiting, monitoring or protecting IP, the same attributes and strategy objectives had to be reflected. Speed and cost are important criteria, but doing things more intelligently is the most important criterion for making IP portfolio-related decisions, especially when faced with a rapidly expanding IP portfolio that is growing more rapidly than the business itself.  Don't just focus on big inventions, at least in a sector in which your business is evolutionary rather than based on major changes: there is much value to be extracted from smaller ones. If you have a limited budget -- as even a company like Caterpillar does -- you have to decide whether to file lots of applications or to limit your filing strategy ab initio. Understanding the competitive landscape is important: search it early, search it often.

Andrew Browne (Shell) then spoke on his vast company's protection and licensing policy, which involves having to tread very carefully in countries in which the level of IP protection is still at an immature stage. Shell's IP strategy mirrors that of all the other major companies. IP is represented at Board level; it's important that even SMEs have a structure that enables the right message to be delivered at Board level.  Shell divides its IP between total exclusivity, shared exclusivity (where third party IP is needed in order to exploit home-grown IP) and freedom of action (where no market exclusivity is available). Monitoring the market is all very well, but most important is to know what to do with the information about your competitors once you've got it. You also have to watch out for 'wild card' events, which may torpedo an IP strategy. Non-R&D gatekeepers are vital if contamination through the communication of trade secrets is to be avoided.

Luc Savage (VP, IP at Orange) then shared some of his company's thoughts with us, this time from the perspective of a service provider that worked closely with academics and customers in delivering its diverse services. Orange has built a portfolio of some 8,000 patents, which is growing rapidly, which raises the question why it grows its own IP portfolio rather than buying in the technology it needs from third parties -- particularly since Orange's favoured R&D strategy is driven towards an open innovation model. In all procurement situations, the IP of Orange's partners must be taken into consideration too.

Next to speak was local, being Michael Faibisch (senior IP counsel, Marvell Israel). Just six years ago, communications and chipmaker Marvell held only 20 patents, but now it receives around 60 a year and holds more than 300, being a recognised leader in its field.  Michael said that the best way to jump-start the patenting process. First ask, "is there a commercial advantage in this innovation?"  If the answer is "yes", then ask "is anyone else doing the same thing?" If no, then it's time to consider the question of patentability.  Early submission of disclosures within the company, using ordinary everyday engineering documentation -- even in PowerPoint -- is encouraged. Filing of provisional applications and securing a filing date is the preferred approach, keeping Marvell's system as close to the requirements of US patent law as possible.  Every invention is examined by an in-house patent attorney; applications are pursued by outside counsel but their work is closely scrutinised by in-house counsel.

Last to speak in this session was Oleg Korshunov (NOVA Measuring Instruments), whose company now holds round 100 US patents, very few of which are developed in conjunction with either customers or suppliers. NOVA looks at existing products and seeks to cover competitors' technologies with its own patents, which are often defensive. The company's policy is to avoid initiating litigation, particularly in the US where it is very expensive, but to use it as a counterbalance to competitors' technologies. NOVA uses external drafting services but handles its own disclosures.

Some quotable quotes:

"Abandon the 'romantic' view -- this is business, where there is no place for sentiment" (Eric J. Siecker)

"Shell is absolutely paranoid about trade secrets because of contamination risks. The same goes about disclosures of technical information to third parties" (Andrew Browne, Shell)

"We clean our portfolio on a regular basis" (Luc Savage, Orange) 

"In IP litigation it's very hard to get support from top management" (Oleg Korchunov, NOVA Measuring Instruments)