Three views from in-house counsel on managing innovation

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Three views from in-house counsel on managing innovation

AIPPP_lunch_Embraer

Diverse perspectives on the challenges of managing innovation in an increasingly politicised climate were provided by in-house counsel from 3M, Canon and Embraer at a lunchtime discussion at the AIPPI Congress



AIPPI lunch panel

Dean Harts of 3M said that his company recently received its 100,000th patent, while Kenichi Nagasawa said Canon had some 860 people working in IP worldwide. By contrast, said Wander Stange Menchik, Embraer has only been dealing with IP since 2006 and has an in-house team of just four people.

“Our competitors are much larger and have a stronger IP tradition. We’re still learning,” he said, speaking in Portuguese. He said his priorities are to ensure that IP assets are protected appropriately, to get the highest value out of the assets while also checking the company is not infringing others’ rights, and to structure the assets in the best possible way – something that is becoming more of a challenge: “The fiscal incentive law in Brazil is being reviewed and that could be a major obstacle if you invest in Brazil.”

AIPPI Embraer

On the positive side, there are few competitors and not much litigation in the aviation industry. But Embraer faces challenges arising from open innovation and cooperation: the company has more than 200 contracts with partners all over the world, including with universities and research institutes. Managing the IP rights and open innovation in that context can present difficulties.

Nagasawa faces somewhat different problems, which include the exponential growth in patents; the threat from patent assertion entities; 3D printing enabling manufacture at home; and what he called the “IP crossover” of different rights. He traced the evolution of an industry such as cameras from mechanical to electronic to IT-based technology, with the latter bringing additional features such as WiFi and GPS. Progression to each stage is accompanied by “a great increase in the number of patents embedded in a single product,” said Nagasawa.

Harts said that 3M is active in 200 countries, and two-thirds of its sales are outside the US; he compared his experience of patent and trade secrets disputes in Germany, Japan, the US and Korea. “The US is the most expensive jurisdiction for patent enforcement – but also the most expensive for defendants,” he commented.



more from across site and ros bottom lb

More from across our site

Niall Trainor, managing attorney at Hasbro, says brands could boost their business with careful portfolio culling
A decision by the Paris Central Division will lead to more IP work for outside counsel, say sources
Courts are encouraged to deliver judgments within three months of a trial, but that deadline has been missed in several recent cases
Lawyers at Maiwald and Sterne Kessler analyse how patents with claims directed to medical treatments are handled in the US and in Europe
Michael DeVincenzo explains how he and his team convinced the Federal Circuit to find in favour of his client in a patent case against Salesforce
Funders and a litigator explain how litigation funding disclosure requirements could affect their business
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Discussions about whether to seek director reviews can come up frequently with clients, even though actual grant rates are rare
In the latest episode, we discuss why IP firms might be attractive to PE investors and bring you the latest news on submissions for next year’s IP STARS rankings
Back-to-back PE deals for IP firms in recent years show that IP firms are sitting on goldmines, so traditional partnerships should be open to change
Gift this article