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How In-House Counsel Can Collaborate with Their Company's Inventors

One of the biggest challenges for in-house intellectual property (IP) counsel is how best to collaborate with their company’s inventors.

One of the biggest challenges for in-house intellectual property (IP) counsel is how best to collaborate with their company’s inventors. 

R&D professionals such as engineers and scientists have busy “day jobs” and are often not as focused on submitting invention disclosures and the patent process as their legal colleagues are.

Scott Barker, Director of Global Patent Development at Micron Technology, is committed to connecting with his company’s inventors globally to bridge cultural divides and establish strong communication. Recently, I asked Scott to share his insights and best practices for how in-house IP counsel can work more effectively with inventors.

Below is the interview.

Doug Luftman: Describe your role/responsibilities at Micron Technology.

Scott Barker: My mission is to ensure that Micron is building valuable IP assets around our extensive innovations and further developing its world-class patent portfolio. 

Doug: When dealing with your inventors located across the globe, what are your top three challenges? 

Scott: Our team engages with Micron’s inventors around the world, including in the US, China, Europe, Japan, Singapore, and Taiwan. Since Micron has inventors spread across various geographies and from diverse cultures, our team strives to ensure everyone is accessible, empowered and included. This requires a high level of understanding, communication and interaction. 

Our top three challenges include:

  1. Cultural Differences – It’s crucial that we understand cultural nuances that affect how our geographically-dispersed inventors approach IP development. Some inventors may be averse to self-promotion, so we must encourage them to be forthcoming about their accomplishments. Language barriers can also inhibit interaction so we use technology, tools and other resources to facilitate translation.

  2. Transparency about Patent-related Decisions – Micron’s IP team makes decisions about which particular inventions to patent. We do our best to convey to participants which innovations we are most interested in patenting and why, even if we chose not to pursue a patent for a particular invention.

  3. Personal Communication – For global communication with inventors, we can only rely so much on electronic means like webinars and email. Our work requires hands-on, high-touch communication to build relationships and facilitate breakthroughs.

We encourage face-to-face meetings when possible; they break down barriers and bridge communication gaps, and put names with faces. Many times, an in-person meeting reveals ideas that provide even greater business value to Micron. Reliance on a system of pure non-personal communication can lead to missed opportunities and weaker relationships between our IP team and inventors.

Doug: How are you leveraging technology to foster better IP team/inventor interaction?

Scott: We have implemented an IP management system which allows both our IP team and inventors to track and submit information quickly from invention disclosure to filing through issuance. Instant access to data empowers our IP community.

We utilize single sign-on to the system to provide easy, secure, online access to relevant patent information, which our R&D community appreciates. We can run real-time reports and set up personalized dashboard views. Inventors like that so they can check the status of their disclosures and the resultant patents. It gives them a greater sense of ownership and inclusion in the process.

Doug: How has it helped for Micron to approach IP management from a workflow perspective, where people know the status of requests in real-time?

Scott: When lawyers and inventors both have access to real-time information, they see how their invention is advancing through the process. Inventors know their ideas haven’t been put into a “black box”. Rather, they have an open, transparent view. If the company decides not to invest in a particular patent asset, the inventor will know why. Decisions are based on a high level of analysis and assessment as to what best fits into the company strategy. 

Doug: With thousands of inventors how do you successfully connect with such a large group?

Scott: For our IP department, it certainly requires a lot of energy to keep engaged with our inventors. Each engineer has a very individual perspective specific to his or her individual inventions. Our priority is to reinforce that each inventor’s contributions are highly valued, whether they are prolific innovators or first-time inventors. We realize the invention process is a personal journey for them and that their inventions may represent some of the most significant technical contributions they make in their lifetime. 

Doug: How do you defuse resistance from inventors who may not see disclosure forms as being part of their “day jobs”?

Scott: Documenting their invention can be a significant time commitment for inventors, especially when added to their perceived “day jobs.” Therefore, our IP team strives to provide an extra level of client service – investing additional time and effort - to show our appreciation of the work the inventors are putting into building our industry-leading patent portfolio. When our lawyers are responsive and answer questions outside normal business hours, the inventors feel inspired to also do more. 

Doug: Micron’s IP department sits with their engineers in the same office space. What benefits does such close proximity have to your IP portfolio development process?

Scott: Micron has a longstanding practice of seating the IP department and inventors together. This close proximity between the IP team and engineers drives camaraderie and encourages engagement during work hours, but also in the lunchroom and after work. Micron’s inventors appreciate that the IP team is a daily resource, present to help and listen. We are their colleagues. Our ongoing close collaboration with inventors had led to great innovation, and I believe it will continue to do so in the future.

Contributing Author

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Doug Luftman

Doug Luftman is chief innovation officer and general counsel at Lecorpio, an intellectual property (IP) management and analytics software solutions company. He may be reached...

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