The IP counsel's role in integrating IP in the business plan

Chief IP counsel sit at the boundary line between ideas and business value

Wayne Sobon, president of the American Intellectual Property Law Association (AIPLA)

In discussing the role of chief intellectual property counsel (CIPC) with Wayne Sobon, senior vice president and general counsel at Inventergy and president of the American Intellectual Property Law Association (AIPLA), the conversation moved from talk of the potential IP challenges of 3D printing to comparisons between CIPC and professional hockey players. During the conversation, however, Sobon painted one picture that stuck out from the rest.

“The most effective chief IP counsel sit at the boundary line between ideas and business value,” Sobon says. It's a clear distillation of an extremely important point. As discussed in the first part of this series, intellectual property has risen to become an essential business asset in the modern economy. Because of this increased importance, more and more companies realize the need for a chief IP counsel, and, more specifically, one who possesses both business and technical competence.

IP is king

The origin of this dual nature, of course, has its roots in the idea that intellectual property has risen to prominence in the past several decades. As Sobon puts it, IP “went from something nice to have in the back corner, to something that makes or breaks competitors all across the economy, not just in the hi-tech space.”

Citing the decline of the classically integrated company, such as the IBM and AT&T models in the last century, Sobon describes an economy that is predicated on long supply chains of coordinated companies working to create products and services. The focus now is on who owns what and how rights are divided across companies that cooperate and compete. With the globalization of the economy and the “digitalization of everything,” who owns each idea is paramount, he emphasizes.

So, in this brave new world where intellectual property is king, the CIPC plays a vital role. “More than ever, those who sit in that role are the ones who understand at a deep level how crucial protecting core intellectual capital is and that you need a sophisticated strategy. They understand what the company's positioning is and how to improve it,” Sobon explains. After that, he says, the key is how to translate that idea into action, developing a strategy that considers the complexity of laws around the globe.

Sobon himself is uniquely suited to bring together these business and idea tracks. He received his M.B.A. and J.D. concurrently and noticed there was little connection between the two worlds.

“M.B.A. schools that train our next executives teach accounting, finance, supply chain, manufacturing and marketing but there is no depth, typically, to coverage of intellectual property. It's seen as a legal issue,” he says. “On the other hand, law schools are now, finally, teaching IP coursework, but do not teach how to translate that to a business strategy. They cover the underlying specifics of law, code and policy, but lawyers are not trained as well to translate that to business execs, talking about the bottom line. How do you make a sensible business strategy? Chief IP counsel can bridge that gap effectively, taking what they know on the ground and translating effective IP strategy into specific actions.”

Building a competitive advantage

As Sobon points out, the importance of intellectual property is not limited to hi-tech companies, and chief IP counsel must develop an IP strategy specifically tailored to his or her company. Even with a wealth of business and legal savvy, a CIPC can't merely adopt a cookie-cutter approach. Sobon explains that the CIPC must think about what a company is doing and why that work is important. Nowadays, boards and chief officers are asking for detail that goes beyond a quarterly report. As patent news now makes the front page nearly every day, boards and officers want to know how intellectual property can help the company get to the next level or gain a competitive advantage.

That relationship with the board and members of the C-suite is an important component in getting the most out of a CIPC. “Successful chief IP counsel are fully integrated. It can't be a function in the corner that comes out to give quarterly statistical reports,” Sobon explains. “The work is on the ground, connecting with executives on a range of business issues, gaining their trust so they’ll listen to you and incorporate your views into their actions.” Listening to the input of the CIPC can often make the difference between success and failure, taking into account factors that others might miss, like how intellectual property might play a large role in a seemingly ordinary commercial transaction.

The foundation of this chief intellectual property counsel, this vital cog in the new machine of business, is shored up by a number of personal qualities that can help an individual be successful in this role. Sobon cited technical competence, being conversant in the business of one's company and able to learn new concepts quickly.

“The best IP counsel are fluid and can listen to, understand and quickly absorb technical details and abstract ideas, generalizing and figuring out the right strategy,” he says.

A balancing act

This technical competence must be merged with legal competence, of course, but also with business savvy. The CIPC needs to be able to translate legalese into business strategies, conveying to the C-suite and board in a successful way. He also cites emotional intelligence as a key trait for success.

“It's not enough to win an argument,” he says. “Lawyers tend to believe that if they have the right argument, they’ll win the day. But that is not necessarily true in boardrooms. They need to quickly and effectively read a room, be politically savvy, and convey their arguments to convince others.”

At the same time, the CIPC needs to be a bit like Wayne Gretzky on the ice. A good hockey coach will tell a player that he needs to “skate toward the puck,” not to the location where it is now but where it is going to be. CIPC need to know the national and international landscape and have an ability to read the shifting sands because, as Sobon points out, the value and importance of IP will only continue to rocket skyward.

At the recent AIPLA Mid-Winter Institute, Sobon was pleased to see more and more content about the importance of business-oriented intellectual property strategies, and at his company, Inventergy, his team seeks to provide practical answers to questions about how to effectively invest in, protect and monetize IP portfolios.

Say all you will about how the world is getting smaller, how our economy is shifting from brick and mortar stores to a world where we can digitize and print out almost any object we desire. The common thread that has carried through history and will continue far into the future is that ideas are valuable, and whether they consist of technology patents or trade dress artwork, the fact of the matter is, whoever owns the ideas holds the power.

As Sobon summarizes, these brand and intellectual assets and properties come together to form the underlying intellectual capital that animates the modern enterprise. And the chief IP counsel can be just the person to shepherd these protected ideas into the future.

Senior Editor

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Rich Steeves

Richard P. Steeves is Senior Editor of InsideCounsel magazine, where he covers the intellectual property and compliance beats. Rich earned a B.A. in English Literature...

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