Community Forum – Managing Intellectual Property
Who manages your IP?
How is the leadership role defined for your IP management function? What are the distinct job responsibilities for this role? How does this role fit within your organization – is it a specialist primarily legal role or a general strategic management discipline? – Tim O’Brien, VP New Business Creation, Moen Incorporated
Chris Quinn, Akzo Nobel Chemicals
Our Vice President and Director of Research and Development is responsible for managing our IP Portfolio. We have a dedicated IP Attorney to provide advice and recommendations to the Vice President. Responsibilities include high level review of novelty before application, deciding what countries to file in, deciding to continue or stop paying maintenance fees, and so on.
We do consider IP Management to be a strategic responsibility of all of our R&D Managers. Therefore the Director of R&D also receives IP support from the Regional R&D Directors and the R&D Market Managers.
Abraham Tijerina, Director of Innovation Management, Metalsa SA de CV
We have a central area to guide researchers with IP issues (Patent, NDAs and Agreements) in concordance with our holding group IP Policies. When an Idea has the potential to become a Patent, this central area helps the inventors to go thru the registration process – we do also have guidelines for deciding when-to and when-not-to go for a Patent. The draft and final documents for Patent Applications are written by any of our pool of external law firms – depending on the country where we will submit the application or the invention is originated. This central area is responsible as well for the maintenance of the IP Portfolio, keeping it up to date and making sure all IP rights are still valid and in use.
Pent Penton, IRI Emeritus, Innovation Insights
In the Chemicals Group of BP, management of the IP portfolio was the responsibility of the Business Unit, and the head of R&D within the BU. The Patent Dept within corporate BP Legal provide guidance and advice regarding IP management, but the ultimate responsibility fell to that of the BU and the head of R&D within the BU. On the other hand, at Ethyl Corp and Albemarle (prior lives before BP-Amoco), the roles were reversed with the Patent Dept having overall responsibility for managing the company’s IP with guidance from the BU’s. I found the BP process more workable since it is the BU that ultimately knows the value of their IP.
Larry J. Howell, IRI Emeritus, Executive Director, Science, GM R&D Center (Retired, 2001)
As Executive Director in charge of the GM R&D Center, it was my responsibility to review proposals for patents, and to decide, with the able assistance of a patent attorney who had many years experience in the auto industry, whether to file a patent, classify it trade secret, or take no action at all. We reviewed proposals, presented orally in about 15 minutes, once a quarter, working as a team. My role was to determine the strategic value to GM, and his role was to assess whether or not the technology or process was patentable. Most of GM’s patents came out of R&D, but some came from other GM units. Unfortunately, at that time (I retired in 2001) we did not have a global process for review. However, the patent attorneys integrated globally to ensure there was no duplication.
Most of our IP was patented for defensive purposes, but we did license on occasion.
Director, Large consumer products company
In our company, a Director of IP has the overall responsibility of managing the IP from invention to patent process with a staff of five people. The director is responsible for strategic filings, freedom to operate considerations, prior art search, monitoring, analyzing and projecting the competitive IP, in-licensing and out licensing of IP. The Director and his staff work with the internal and external counsel on all the legal matters and he/she is the person responsible for all the business matters associated IP. The group works with the product development personnel. This position is consistent with the bench marking that was carried out. The importance of IP as an intangible asset has grown tremendously. This is one of the critical functions of a business and will become very critical in the near future as the value of intangibles increase on the balance sheet of a firm.
The position needs to be filled by a person who has a broad scientific expertise and business skills.
Stewart Witzeman, Director, Eastman Research Division, Eastman Chemical Company
Patent decisions are ultimately made by the business technology director, who is responsible for management of the research/business interface. These decisions are typically made using a cross functional team to determine the best patent filing strategy. While these aren’t formal patent committees, they serve much of the same role. Most businesses have patent strategies established in advance including pre-defined ‘Tiers’ of countries for patent filing. For example a ‘Tier 1’ filing might be a very narrow set of countries for filing while higher Tiers will be broader. The countries in the respective tiers depends on the individual business strategy and competitive situation.
In addition to these decisions, our Patent Operations group (which is part of the patent law department) runs annual docket reviews. In these reviews all dockets up for renewal in the upcoming year are reviewed and renew/abandon decisions are made.
All of these activities are done with appropriate advice and counsel of our patent law group.