What Would You Say to Research and Development Types About Patents?

This Kat has been "away on assignment", as they say, and settling back into his frenetic version of routine has proved to be a challenge. We're getting there, though.

As periodically happens, I was recently called upon to speak with R&D types about patent law and practice principles, this time at the susbsidiary of a major multinational company. The challenge, as always, is how to pitch the presentation. After all, the company maintains separate patent counsel to deal with the drafting of patent applications. On the other hand, we are viewed as providing "value-added" regarding such issues as licensing and commercialization, ownership (think: independent contractors and university research support), litigation and strategy.

Maybe yes, maybe no, but that still leaves the question of how to play to our professional strengths before this audience, while still being professional useful for them -- and me (I stay completely away from the tricky HR issue of the rights and remuneration of employee-inventors.)

One way by which I have tried to address this topic is to devote time to the question of "why are patents filed"? There is, of course, no single set of answers. Lurking behind this question is the overaching issue of whether to view patents (and intellectual property more generally) as a more of a top-down, or a bottom-up matter, within a particular organization.


For the present, consider the following list of posible reasons why patents are filed.

1. The company has no overall policy and patents are filed at the division or similar level without any overall strategic managment or control.

2. Patents are seen as protection against competitors.

3. Patents are used as both signals and mis-signals,information and disinformation, about the company's intentions.

4. Patents are seen as providing potential licensing revenues.

5. Patents are intended to enable the company to engage in effective cross-licensing activity.

6. Patents are intended to prevent competitors from entering into an area, even if the company itself has no intention of entering that area.

7. Patents are a form of lottery, where there are potentially huge rewards for successful litigation.

8. The "anti-patent" alternative allows a company to publish contents and results that have the effect of creating a patent-free landscape.

These various reasons are presented and a discussion ensues.

In placing empahsis on the question of-- "why does a company patent?"-- before an R&D- focused audience, there are several assumptions, First, some of the R&D audience will move on in their careers to managerial positions in which they may be called upon to take part in discussions regarding patent strategy. Becoming familiar with the issue may make them more valuable for the company going forward; indeed, showing an interest and competency in this kind of question might enhance one's move to a managerial position, if the employee seeks to do so.

Secondly, carrying out at least some of the reasons why patents are filed in a company may require the active involvement of these R&D types. Their involvement can take one of two possible forms. If the relevant managerial personnel is aware of the need for such involvement, then empowering R&D tyypes to take part in such activities fits in seemlessly with overall managerial goals. However, if the managerial superiors are not fully aware of the potential need for input from these employees, such empowerment may well lead to better decision-making by the company, if the input from the R&D types is allowed to percolate upwards.

There is another risk here, which is more my own. There is not necessarily any unity of interest between R&D types and other job types within the company with respect to patent activity. These divergences include not only senior management versus R&D, but also involve marketing, financial, product development and HR. In raising this question of the question of why to patent, one inevitably alludes to, if not openly highlights, potential areas of disagreement or conflict with respect to the company's patent practice.

As with the question of why a company patents, here too there is no single answer how I can best navigate between these various points of potential friction. One thing is for sure--there is probably no other situation in my IP practice in which I am less uncertain about who exactly "is my client" in such circumstances.