No matter how skilled or experienced an IP lawyer is, protecting a company’s IP portfolio is not a job that can be done independently.
No matter how skilled or experienced an IP lawyer is, protecting a company’s IP portfolio is not a job that can be done independently. Instead, it’s an ongoing task that requires co-operation and buy-in from the entire organization, and it’s up to the in-house counsel to ensure that occurs.
That’s one of the common pieces of advice given by four separate in-house counsels with responsibility for IP at four very different companies.
When asked to share what they consider to be some of the best practices for managing an IP portfolio, Panagiota Dafniotis, assistant general counsel and head of the intellectual property group at the RBC law group at Royal Bank of Canada in Montreal, Joanne Nardi, director of global intellectual property at Molson Coors Brewing Company in Toronto, Catherine Eckenswiller, legal counsel at VBI Vaccinations Inc. in Ottawa, and Todd D. Bailey, senior counsel of intellectual property in the legal services division of aircraft engine manufacturer Pratt & Whitney Canada Corp., all stress the importance of communication and education when it comes to making sure company employees understand IP is a valuable asset.
“The idea that documenting your IP strategy and coming up with a process on how you make decisions is in itself important,” says Bailey, who is based in Longueuil, Que.
“It’s also important that you can communicate to your organization, [saying], ‘Here’s the kinds of patents we file, here’s what you should be looking for in your work, here’s the decision tree we use for filing.’ You need to be able to communicate with your inventors, with your technical population, if we’re talking about patents, so that they know what to do.”
Bailey says that just because somebody is a developer or an inventor or an engineer, it doesn’t mean they understand exactly what value their creation has to the business. Often, he says,creators don’t even bring their projects to in-house counsel because they don’t understand that the projects are patentable or that those projects can benefit from the protection that comes with a patent.
Communication and education can’t be a one-time effort, says Dafniotis. They have to be ongoing processes that build a strong foundation and an encompassing culture.
“I think that is one of the big mistakes that even mature practitioners may make or quite frankly overlook because they get so busy. Once you have this robust portfolio, you forget about the fundamentals, but the foundation needs to be not just built but maintained and reinforced over time,” she says.
“That’s really what gives you the greatest traction and adoption in the organization because the moment people understand and are engaged in a particular strategy, that’s really when you get the most traction and success in protecting what needs to be protected in your company.”
Communication goes beyond simply explaining the company’s approach to patents and trademarks and trade secrets and other forms of IP. It also means going out to the various departments where creative work is happening and getting involved, although the trick is getting the timing right — right for the creation or development process and right for the business.
For example, Nardi, who is based in Toronto, says that because the innovation team at Molson Coors is “very sophisticated” she tends not to get involved in the invention process too early. She tends to know what’s going on, but she understands that not all inventions are patentable or even workable, so she starts to play a more active role once the project is at the stage where it is close to being able to file a patent on the discovery.
In contrast, when it comes to developing trademarks for new branding, she says, “We like to be involved very early because we’ve had situations in the past where they come up with a name, they sell everybody on it and think it’s fabulous, then find out they can’t use it. So, we’re typically involved right at the beginning of the process now, once they’ve gotten half a dozen or a dozen names that they’ll like, we’ll take those away and see whether they’re available or not.”
At the VBI subsidiary Variation Biotechnologies Inc. in Ottawa, Eckenswiller drafts patent applications in-house. Being located in the same place as the company’s research facility instead of at the corporate headquarters in Cambridge, Mass. means she has access to the research scientists. This allows her to follow all of the new developments and innovations that are likely to find their way into the company’s IP portfolio.
“I can’t overstate the importance of staying close to that, because things can move very quickly on the research front,” she says. “I try to stay up to date all the time with what they’re working on. That can be attending meetings of the R&D team — annual updates, quarterly updates and even weekly meetings sometimes. I try to stay up with it all the time so, as things are developing, when a new idea comes forward, I try to keep my ear open. I also try to keep close so I’m aware of when people are making presentations or publications, as that can be a critical juncture in the IP world.”
Managing an IP portfolio goes beyond working with internal stakeholders. It also means dealing with legal challenges outside of the organization.
Eckenswiller, who previously worked at National Research Council Canada, says that, because VBI (which has 126 fully owned or licensed or co-owned patents and patent applications) produces “vaccines in the biologics area,” she has to be concerned not just about IP protection but about regulatory law.
“In that area, as well as in all pharmaceutical areas, the availability of data protection to protect our products from competitors in the regulatory space is important. There is intersection between patents and regulatory [rules and procedures] in terms of knowing how to use both of those processes and ensuring that those processes are well aligned to provide the maximum benefit for our company. Now, we think not only about patents to protect our products but data protection as well as the intersection of those two types of protection.”
In-house IP counsel also have to be concerned about changes to the law both here in Canada and abroad.
Citing the changes to the Trade-marks Act that came into force in Canada in June — specifically the elimination of the intent to use requirement — Nardi says that Molson Coors (which has approximately 8,000 trademark assets and more than 200 patents registered in more than 200 countries) will likely have to become more vigilant about competitors infringing on the company’s trademarks.
“We already have watches in place for all our main brands, but we may bump that up a little bit to cover some more brands, because if we see anything filed that’s similar to ours, it could end up going through registration when there is no use. Really, I think what the Canadian office is doing is putting the onus on trademark owners to watch their portfolios and defend their marks. It used to be CIPO that did part of that for you, but now it’s up to the owners. We’re going to have to be more on top of things,” she says.
If Molson Coors does wind up fighting infringements due to the revised law, that won’t be anything new for the brewery. Nardi says there is a lot of litigation in the beer business, with not just big breweries challenging each other but with smaller breweries infringing on established marks.
“It’s just part of doing business, unfortunately,” she says.
Pratt & Whitney is also finding that legal challenges to its IP properties are becoming more common.
While the law that established the rules for inter partes review of patents in the U.S. has been in effect since 2012, Bailey says, the aerospace manufacturer is “starting to see more and more of those.”
“They are difficult processes as a patent holder to defend your patent in, and it’s affecting how we need to think about how we’re protecting our inventions when we prepare the patents in the first place,” he says.
Even beyond changes in the law, changes in the business landscape and in the field of technology are causing in-house IP counsel to confront new issues and to draw on their experience as they lead their companies forward.
While it may seem like a minor point, Bailey, for example, notes that part of his duties include examining the issue of open-source software licensing and determining “whether or not our people are using open source or including it in the product or the software associated with the product.
“That’s a really important thing to get one’s arms around,” he says.
Moving beyond small details such as open source to a bigger-picture view, Dafniotis says banks and fintech companies, along with other businesses, are being confronted with artificial intelligence and machine learning and other new cutting-edge technologies and are having to come to grips with what exactly these are and how they can be incorporated into their products. She says that while these things may be daunting for businesses, IP counsel are well positioned to offer leadership and guidance regarding these new tools.
“Companies today and in the last few years have been talking a lot about digital transformation — digitization of products and enhancing their technology to transform their organizations.
“IP practitioners have actually been in the digital transformation business since the internet became a corporate tool . . . because that’s when software patents became relevant to our organizations. That’s when digital copying and the impact it had in the copyright world became relevant. And that’s when digital brand abuse became a thing,” says Dafniotis.
“So, we have the benefit of that experience, as lawyers and as IP practitioners, to be able to look forward and say, ‘Well, what else is coming?’
“These emerging technologies and the acceleration of deployment of these new technologies — whether we’re talking about AI or blockchain or so many others — is really an acceleration of issues we’ve already had a lot of experience with,” says Dafniotis.