Paradox of Innovation and Intellectual Property

by Deborah Mills-Scofield

Paradox of Innovation and Intellectual PropertyBeing involved in Open Innovation (OI), one of the most cited stumbling blocks is, yes, lawyers – Intellectual Property (IP) attorneys specifically.  To most business and R&D folks, IP counsel are viewed as deal killers.  So I was anxious to hear Kelly McDow, Associate General Counsel for P&G‘s Connect+Develop, speak at the 3rd Open Innovation Summit at BW’s Center for Innovation & Growth*.  Kelly started out as a chemist, giving her a unique non-traditional-lawyer perspective of invention and innovation.   Her experience exemplifies what is needed in a good Open Innovation IP attorney – the ability to understand and see many sides.

Kelly posed two questions to the audience:

  1. How can IP attorneys help foster an OI mindset?
  2. How can you help both sides’ IP attorneys get there?

Great questions that turned the tables from just usually ‘blaming’ the IP folks for ‘not getting it’ to how do you help them get there.  We usually view our IP counsel as either over-protective or adversarial.

Kelly provided ten actionable and effective answers to these questions:

  1. Find an IP attorney that is flexible and collaborate, able to see both sides.  Wow, pretty basic huh? Some of us don’t have that luxury with our corporate or outside counsel.  So, what can we do? Keep reading down the list to help engage and educate your counsel – if you don’t try, you can’t expect any progress.
  2. Help your OI partner find a flexible collaborative IP attorney if they don’t have one.  If they already have one, work with them to engage and educate.  This builds the relationship and trust, which only helps make a better deal if one is to be made.
  3. Enroll your IP attorney early and often.   We all understand things better when we are involved early and see how the idea evolves, why it matters, how it makes an impact.  IP attorneys are no different.  Treat them like, and make them into, real partners.
  4. Be mindful of confidentiality.  You know the phrase “loose lips sink ships”?  Treat confidentiality wit the highest regard and respect.  Nothing slows down or kills a deal faster than breaking trust.
  5. Know what you, and your partner, need to be successful.  Think about success broadly; there is the success of the initial collaboration and the success of an ongoing relationship.  The initial collaboration may not work because the technology simply doesn’t work as everyone thought – that doesn’t mean the relationship has to end, just that specific collaboration.  These are two separate views of success.
  6. You don’t need to own everything!  Many companies think they have to own all the IP!  Determine what you really need to strategically “own” vs. license. Don’t inhibit your partner’s ability to grow and provide more opportunities for collaboration because of your greed or need for control.
  7. Due your due diligence, let your partner do theirs and be nice to their IP attorney! Your partner has as much of a right to do due diligence as you do yours.  Remember, while it may seem the business head has the ability to seal the deal, it’s really the IP attorney.
  8. Don’t lose your temper! This is easy to do – there are always times of frustration, even exasperation, so just huddle.  Stop, take a break and discuss with your team.  If you lose it, there may be no regaining!
  9. Plan for the marriage…and the divorce.   With OI, you do need a pre-nuptial!  Take care of divorce T&C’s when you are calm and rational instead of in the heat of the moment. Just like #5 above, the divorce can be over just a particular collaboration, not the entire relationship.
  10. Most importantly – Make sure you know what flavor latte your IP attorney likes

We tend to think of our IP counsel as adversaries or over-protectors.  Kelly’s advice and counsel works for P&G and it can work for each of us too.  As usual, it comes down to the soft skills – to people learning to trust each other and work together.  At least try with your counsel and see.

*Disclosure – I’m a ‘partner’ at the Center for Innovation & Growth and helped organize these events


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Deborah Mills-ScofieldDeb, founder of Mills-Scofield LLC, is an innovator, entrepreneur and non-traditional strategist with 20 years experience in industries ranging from the Internet to Manufacturing with multinationals to start ups. She is also a partner at Glengary LLC, a Venture Capital Firm.

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  1. The sound, fundamental [and routine] advice from Attorney McDow is wrapped by Ms. Mills-Scofield in a load of pretentious, self-important crap.

    “Be mindful of confidentiality,” “You don’t need to own everything,” “Due your due diligence,” “Plan for the marriage…and the divorce” – ALL of these require legal counsel to research, review, analyze, negotiate, and draft legally-enforceable documents. According to Ms. Mills-Scofield’s patronizing approach toward counsel, business managers should “[a]t least try” to be nice, pat counsel on the head, and dangle coffee before them as a motivator.

    This immediately self-defeating approach is founded on the false conceit that business managers always, or even mostly, know best – they clearly don’t: Exhibit 1 is the dramatic increase in intellectual property litigation in the last decade because business managers ignore basic trade secret law, fail to invest in patent “freedom to operate” opinions, do not have their marketplace announcements and advertising reviewed, do not clear the rights to trademarks and product and packaging trade dress, do not put in place employment and independent contractor assignment agreements for IP [most have no idea what IP their company even owns], and wholly fail to integrate the intellectual property their companies do own into the fabric of their company’s general intangible assets. And they don’t even try to value their IP for accounting purposes [leaving that job to courts when it comes time to assign damages in IP litigation].

    The article would have been much more useful if its subject was “Educating Business Managers About What They Don’t Know About Intellectual Property – And The Consequences Of Their Ignorance.”

    This IP attorney chooses not to assist pretentious business managers who think they know the legal ins and outs of managing intellectual property. This type of manager disdain attorneys reflectively and yet are the first to shift the blame when their deals go south. Why on earth would IP counsel work with them?

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