On Monday 26th November Adamson and Partners were once again privileged to host the latest instalment of our UNSCRIPTED roundtable series at the Law Society in London. This year’s focus was on the challenge of managing and resourcing a modern IP team. After preliminary drinks and networking, the discussion was introduced by Partner and UK Practice Head, Milli Bouri. Milli was joined by our five distinguished panellists:
Dietmar Pressner – Global Vice President of Intellectual Property, DSM
Ann Critchell-Ward – Vice President of Intellectual Property Operations, TomTom
Peter Yennadhiou – Deputy General Counsel and Chief Intellectual Property Counsel, HP
Armando Pastrana Jr. – Chief Intellectual Property Counsel and General Counsel
Matt Lawman – Partner, EIP
Our first topic for the evening – and one close to Adamsons’ hearts – was the retention of top talent in the IP field. Panellists unanimously agreed that, while remuneration is an important consideration, it is rarely the deciding factor in talent retention; of more significance is cultivating a ‘meaningful environment’ through ability to offer benefits such as training and learning, autonomy and personal empowerment. Panellists emphasised good hiring – particularly the capture of ‘inexperienced but bright’ individuals – as a pre-requisite, alongside training and promotion from within to encourage foundation and evolution of a strong and stable IP team. Panellists also strongly advocated the importance of hiring diverse teams to function most effectively, reflect broader user experience and ultimately make better products. In respect of the latter, HP took a bold initiative a couple of years ago with “diversity holdback” measures, involving withholding a proportion of legal fees from outside counsel that didn’t meet minimum diversity staffing requirements.
The discussion then turned to exiting team members. Two widely identified factors for staff departures were dissatisfaction and lack of trust in the surrounding team or corporate environment. It was acknowledged that while there is always the potential for more attractive IP opportunities, providing honesty about what you can offer is crucial. The ability to develop and grow a team internally was highlighted as being preferable to relying on the increasingly competitive field of lateral hires, even at associate level [although we would like to reassure that we continue to maintain a high level of success for single and team hires in tough, candidate-driven markets!].
The panel then moved on to the topic of working with outside counsel (OC). Panellists agreed that important aspects in terms of establishing a good working relationship included fair pricing; quality of work; sensitivity to commercial considerations; proactive communication and management of expectations (particularly on delays) and a continued focus on strong client care. In addition to these controllable factors, the panel also identified more arbitrary concerns that could result in the need to switch IP providers or re-tender, including the intervention and influence of procurement teams (creating increased panel competition); management shake-ups; demand outstripping supply capabilities; and the general consolidation of services. The concordant advice was for corporates to conduct regular reviews of OC relationships to help guard against complacency and to give opportunities to smaller firms who may be ‘hungrier for the work’. It was also suggested that OC could strengthen or win new relationships through a concerted focus on measurable aspects of their performance, remaining mindful of corporate budgetary constraints and through treating tender exercises as opportunities to stay competitive and ‘keep on their toes’. The panel also unanimously agreed on the value of encouraging OC without previous in-house experience to raise their commercial awareness through more direct client contact or secondments where possible.
The discussion then moved on to the theme of IP budgeting, raising lively debate among panellists and audience alike. Panellists were largely divided on the question of cost saving through rigorously culling from patent portfolios –with a rate of patent assertion posited at typically about 1 in 4 – vs. playing ‘the numbers game’ of investing in a larger number of patents to safeguard against an uncertain future. On the less contentious side, panellists acknowledged that narrowing claims too heavily, or cutting outside counsel, could both prove to be a false economy where they respectively led to ineffectual patents or internal dissatisfaction, meaning that budgeting can often be a ‘tightrope walking’ exercise. Investment in prior art searching in particular – commoditised though it seems – was widely agreed to have the potential to pay dividends in solid fundamental drafting practices.
The final topic of discussion was the perennial notion of tech disruption, particularly pertaining to the IP field. Parallels were drawn with the legal sector, where tech innovation is already having a significant impact in, for example, eDiscovery and contract drafting. It was suggested that technology in its current state was likely to make the most profound impact on patent searching, particularly with respect to the ability of APIs to download specs from the EPO and input details for machine learning. Trademarks were also suggested to be a natural arena for increased automation in the shorter term, with their visual emphasis naturally providing an easier search matrix for machines, particularly in novelty terms. Patent attorneys can, however, breathe easy in the knowledge that panelists were united in viewing full AI drafting as an unlikelihood, at least in the medium-term. Despite ‘coded’ aspects of patents – like Cooperative Patent Classification – implying the prospect of greater automation potential, key aspects of commercially viable patenting – like mapping portfolios onto products – were roundly (and unsurprisingly) agreed to be more intellectually nuanced endeavors!
After some fierce but enjoyable debate, the evening was then rounded off with more drinks, canapes and further insightful discussion of pertinent IP topics among smaller informal groups.
We would like to thank all of our esteemed panelists and guests for joining us at our sixth UNSCRIPTED event and for making the evening such an enjoyable and thought-provoking affair. As we enter 2019 we look forward to hosting further events in mainland Europe in the spring and in the UK again next Autumn.
In the meantime please do not hesitate to contact us should you wish to discuss the market or have any potential hiring or salary survey needs.