The human factor
A good mindset for IP 4
For this blog post I would like to shift our focus to the individuals involved on the intellectual property (IP) side of things. While our previous posts primarily centered around people within the organization, it is crucial to consider the entire IP value chain, including IP experts such as outside counsel and various national attorneys who play a significant role..
Cooperation and communication with external partnersParticularly for IP rights like patent applications, the number of IP experts involved in a project or even a single application can be substantial. Since patents are typically filed on a national level, with few exceptions like the European patent application, it often requires engaging multiple national attorneys. In many countries, it is mandatory for the applicant to hire a national attorney for specific proceedings with the respective patent office.
In my experience, I have come across different approaches to handling collaboration and communication with outside counsel. Many of these approaches share a common concept: centralizing key information with one entity, whether internal or external counsel, who then disseminates this information to various national attorneys. This initial step makes sense. However, it is often stretched further, resulting in the majority of information being retained by one counsel, with the remaining attorneys essentially only consulted for formal and technical questions related to national law.
Loss of important informationAt first glance, this approach may appear practical and efficient. However, I have found that the outcomes are not always optimal, and there are several downsides to consider. One problem with long communication chains for information without context is that crucial information tends to get lost. We are all familiar with the children's game "telephone," where a message gets distorted as it passes through multiple individuals. This effect becomes even more pronounced when dealing with complex matters such as a patent application. If only the application text and a few instructions are shared, it is not surprising that information can be lost, especially when dealing with complex technologies expressed in formal legal language. Additionally, there may be translation issues to contend with.
However, what's even more critical is what is not explicitly written. The overall business objective, which is a vital component of the application, often remains absent. Typically, the focus is solely on the technical features or design elements. However, IP rights are filed in alignment with business strategy to gain a competitive advantage. Therefore, without the main objective and underlying strategy, it is difficult to obtain a comprehensive understanding.
The consequence of this approach is often lengthy feedback loops during the application process, such as the examination of a patent application. Understanding the cost structure of patents is essential in this context. The majority of costs are incurred after the application is filed during the examination phase with various national patent offices. Therefore, reducing the number of office actions during examination significantly decreases costs.
Commitment and creative solutionsLastly, amidst the complexity and formal requirements of obtaining an IP right, we must not overlook the fact that it is people who are involved. People deliver better results when they fully comprehend the matter and are aware of the objectives. This understanding significantly increases their buy-in for the IP project and enhances their ability to find creative solutions to achieve the overall goal. I have discovered that it is helpful to take the time to inform the entire team of IP experts involved about the business objectives and other important details of an IP project. This need not be an expensive and time-consuming endeavor. Costs can be minimized through shorter application durations, and synergies emerge after collaborating on multiple IP projects. A pleasant side effect is that the benefits multiply over time as relationships are built.
I would love to hear your thoughts on this subject. Have you encountered difficulties in managing IP projects with various IP experts involved? Were you not satisfied with the scope of IP rights for certain countries?