Such arrangements risk missing out
on valuable IP, as IP is either not
recognised at all or else is viewed too
narrowly (e.g. as patents only), which
can lead to IP such as copyright and
trade secrets going unnoticed, and
therefore failing to add value.
Moreover, such arrangements are not
conducive to the consideration of IP
issues at a strategic level. IP is rarely
a board-level responsibility in these
situations, so receives little board-
level attention, except in exceptional
situations such as when the
organisation is sued for infringement
of a competitor’s IP.
As long ago as 2004 Bill Gates,
then chairman of Microsoft, was
espousing developing, at board level,
a sophisticated understanding of IP
issues, saying: “over the last 10 years,
it has become imperative for CEOs to
have not just a general understanding
of the Intellectual Property issues
facing their business and their industry,
but to have quite a refined expertise
relating to those issues... It is no longer
the legal department’s problem.
CEOs must now be able to formulate
strategies that capitalise on and
maximise the value of their company’s
Intellectual Property assets to drive
growth, innovation and cooperative
relationships with other companies”,
whilst in 2014 Frans Van Houten, CEO
of Philips, argued the same point more
succinctly: “A business strategy without
an IP strategy is no strategy”.
The workshop identified plenty of
examples where well-executed IP
strategies had helped to add value
to a business. In one such example
a company with a small IP portfolio
identified a target company with a
complementary portfolio of IP rights
and acquired the target company,
thereby bolstering its IP position and
helping it to counter a known challenge
from a competitor whose patents
were being infringed. The acquisition
of the target company and its patent
assets were key to enabling a defence
strategy which enabled the company
to retain its market share.
It’s clear that significant benefits,
including better decision making on
IP issues (or even just some decision
making!) can be derived from a strong
appreciation at board level of the
significance of Intellectual Property.
But what would a senior role with
responsibility for IP (called something like
“Chief IP Officer” or “IP Director”) entail?
IP issues will impinge on multiple
different areas of a business, so a CIPO
needs to be a senior employee with a
strong understanding of the needs of
the business as a whole. Rather than
just managing patents and other IP,
the role of CIPO involves developing a
detailed understanding of the business
and formulating effective IP strategies
that will further the interests of the
business. Accordingly, the role requires
an IP strategist, rather than an IP
manager.
The CIPO must engage with the
Chief Information Officer, the Chief
Technology Officer and General
Counsel, as well as other functions
such as human resources and IT in
order to build this understanding,
and marry it with their own expertise
in Intellectual Property issues to
develop these IP strategies. Good
communication skills and an
understanding of both technology
and business issues are therefore
prerequisites.
The CIPO must also have the authority
and confidence to share their
expertise in IP matters with the CEO
and other executives in language that
they will understand. A major part
of a CIPO’s role is to translate the
jargon that is particular to the field of
Intellectual Property into appropriate
language, and to translate hard IP
issues into business impact issues that
can be understood by those who don’t
specialise in IP.
Additionally, the CIPO must be
able to identify and capitalise on IP
opportunities as they arise, wherever
in the business those opportunities
may come from, which further
highlights the need for the CIPO to be
engaged with all areas of the business.
Aside from the improved decision making
and better strategic use of IP that comes
with the CIPO role, one of the clearest
benefits of the role is that the CIPO
becomes the single point of contact
within the business for IP matters, and
develops a corporate memory on the
specific IP challenges and benefits within
the sectors of the business.
Of course, even the most confident,
knowledgeable and authoritative
CIPO will struggle unless the Board
understands that IP and the role of
CIPO are important to its business; if
there is recognition at board level of the
significance of IP, half the battle is won!
All organisations create Intellectual
Property and should have a plan for
collecting, understanding, monitoring
and enforcing their rights. The plan
should be strategically aligned with the
company’s business goals. To enable
such understanding and alignment,
all businesses should ensure that
someone “owns” the Intellectual
Property remit. In an ideal world all
organisations would have a role of Chief
Intellectual Property Officer, to enable
proper interdisciplinary understanding
and to benefit from the hugely valuable
intellectual assets being created on a
daily basis by the business.
13
All organisations create
Intellectual Property and
should have a plan for
collecting, understanding,
monitoring and enforcing
their rights.
Matthew Howell
To find out more contact
Karl Barnfather
