Trade secrets vital to autonomous car IP strategies
Deciding whether to patent inventions or keep them as trade secrets, and ensuring that increasingly mobile employees do not leak confidential information to competitors or in journals, are key concerns for autonomous car companies, according to a panel at this year’s AIPLA Annual Meeting.
Catherine Tornabene, head of IP at driverless vehicle firm Aurora Innovation, pointed out that companies must keep an eye on the future of mobility when they are considering whether to patent an invention or keep it secret.
While something like a black-boxed machine-learning algorithm that helps run a car might not be detectable now, she said, that does not mean that it will not be within the next decade.
“For me, every time we look at patenting v trade secrets, it is a pretty serious decision. What we can tell right now about machine learning is really different than what we could tell 10 years ago.
“You have to be thinking about 10 to 15 years in the future. It is hard to see much further than that but it is something to think about.”
Christopher Nalevanko, general counsel at driverless car start-up Zoox, said that choosing whether to patent something or keep it as a secret was an important matter for his firm as well, and for many of the same reasons.
Tornabene went on to say that where a company chooses to keep inventions confidential, they must consider the challenges of managing an increasingly mobile workforce. Many of the people who work at driverless car companies are highly educated and skilled in a fast-growing industry, and are therefore seen as a competitive asset in the automotive and tech industries.
“They can move around,” she said. “And when you approach your IP strategy, you must consider what happens as someone comes in and out.” She added that not only do firms not want their trade secrets to be handed over to a competitor, they do not want to be in a situation where they have unwittingly incorporated secrets from another company into a project.
Nalevanko added that many of these employees are also interested in the academic space and publishing their work in journals. The risk is that staff will publish something and inadvertently disclose a critical piece of technology. As such, businesses should work with employees to enable them to publish in academic journals while reducing the risk of disclosure.
“Driverless cars is a hugely academic area and you need some sort of process to allow employees to engage with academia,” he said.
‘Why should we give away our code for free?’
One of the last sessions of the AIPLA Annual Meeting on October 25 focused on how businesses can navigate the IP landscape, particularly when it comes to matters such as employment agreements, branding and incentivising staff to get on board with the company’s patent strategy.
Christian LaForgia, attorney at Banner & Witcoff and former IP counsel at Wickr, kicked off the talk by explaining the importance of getting buy-in for an IP strategy from the company’s C-suite executives, including the chief financial officer (CFO) and the chief technology officer (CTO).
He pointed out that while obtaining patents for lucrative inventions is vital, those rights do not generate an immediate return on investment, and the CFO should be made aware of that fact. Similarly, the CTO oversees product development and should be brought on board.
He went on to explain that it is also crucial to get buy-in from engineers and developers, and how that can sometimes prove to be difficult.
“I’ve encountered developers who feel strongly about patents one way or another,” he said. “You get some developers who just don't want to patent anything and think that code should be put onto the open source space.”
He added that it is important to explain to them why that situation does not always work. “We wouldn't ask you to write code for free for us, we explain, so why should we give away our code for free?”
LaForgia also noted that companies should have some sort of incentive scheme to get employees on board with the IP program. Inventors at Wickr, he said, responded well to being given plaques in recognition of their hard work, as well as financial incentives.
The business also made a point of celebrating each patent it filed, he said, by using a company chat app to make corporate announcements on matters of prosecution.
“One time, we had four or five patents issued in one go, and to get everyone up to speed with that good news we made an announcement on the group chat. It engaged a lot of people and the inventors got the recognition they deserved.”
“And ultimately, it lifted the mood of the company and served to keep inventors engaged with the patenting process.”
A final point he made was that open source licensing was also a big concern for his business. There are many licenses in the open source space and attorneys must make sure, if their business or client is contributing to a project, that their IP is not lost in the process.
Being kind key to building client relationships
Current and former corporate attorneys revealed how private practice lawyers can better cater their services to in-house counsel and potential clients, in the “Know Thy Client: Practical Tips for Strengthening the Outside/Inside Counsel Relationship” session at the 2019 AIPLA Annual Meeting.
Top tips included avoiding the ‘bait-and-switch’ approach during pitches, ensuring that the team presented is diverse and being honest when it comes to matters of cost. But perhaps the most important pointer was for external counsel to show empathy and be kind to clients.
“For me, having a person who cares about me and my business is extremely important,” said Robert DeBerardine, chief IP counsel at Johnson & Johnson. “It is about finding someone who is willing to do the hard work and is the kind of person who works well with others, and is not as concerned with themselves as making their clients successful.”
He added that private practice counsel should take the time to find out more about their clients and work around them. If they have budgetary constraints, for example, lawyers should work to accommodate those into their strategies and not draw matters out because they are expected to bill a certain number of hours.
Panel moderator Jessica Ergmann, IP director at Arctic Fox, agreed that empathy is an important factor when it comes to choosing to hire and keep external counsel, and added that likeability goes hand in hand with that attribute. She noted that it was important for her that she could “sit at the bar and have chit chat” with any lawyer she worked with.
Marc Adler, of counsel at Buchanan Ingersoll & Rooney and former chief IP counsel at chemicals company Rohm and Haas, said building personal relationships is important to in-house counsel.
“The people I picked were those I liked and had a good rapport with,” he said. “I could get an answer to a question quickly and without worrying about being on the clock. They were the people who would give me information that I had not even asked for, and people I liked personally.”
