Schwegman Lundberg & Woessner, PA
What is the key skill set top ranked patent lawyers must possess?
Top ranked patent lawyers should have deep client empathy, outstanding communication skills, an ability to quickly grasp complex technology and confidence to provide considered and clear advice.
Which case or project that you have worked on are you most proud of and why?
Establishing Schwegman’s Silicon Valley office with Garth Vivier and working with the firm’s leadership to grow our presence here over the past 15 years to what it is today has been tremendous fun. I am also grateful to have worked alongside some very talented in-house counsel in Silicon Valley (eg, at eBay Inc, from the filing of its first patent application in 1997) to build world-class patent portfolios.
What makes a top-class IP strategy?
Clearly understanding the ‘why’ of an IP strategy is crucial. Without truly being able to articulate and communicate why intellectual property is important, a strategy will not gain traction or buy-in. All strategic decisions and tactics flow from understanding the ‘why’, from the portfolio-wide strategy to the individual case strategy.
An effective IP strategy also requires a clear view and understanding of exactly the nature and value of all IP assets included in a portfolio. This is easier said than done, particularly for patent assets. At Schwegman, we have developed some internal tools to help our clients identify, understand and value the patent assets that they own. Measuring the return on investment relative to the ‘why’ is also crucial. Further, yield management (eg, pruning less valuable assets from a portfolio to free up budget for new IP asset creation) is also a difficult but important component of a good IP strategy.
Finally, continual evangelisation and communication of an IP strategy and programme is also key!
In your experience, what does a world-class in-house function look like?
A world-class in-house function operates to effectively manage risk for a company, while at the same time facilitating the achievement of a company’s objectives. A close and respectful collaboration with outside counsel can help in-house counsel achieve this challenging role within a corporation.
How would you characterise the US patent environment currently?
Subject-matter eligibility uncertainty has introduced uncertainty and risk management challenges, but innovation remains strong. Strong innovation demands a strong patent system and we are seeing a pullback from the perceived weakening of the system over the past few years. We are also seeing patents being viewed as collaboration tools, rather than weapons, particularly as synergies between patents and open source are being increasingly appreciated.
In which technologies are you seeing the most growth in patent interest currently?
Machine learning and AI are on fire across a wide variety of tech sectors and we are witnessing a corresponding growth in patent interest. Patent applications relating to quantum computing are also increasing significantly. Transport and mobility technologies (eg, autonomous vehicles and vertical take-off and landing aircraft) are also receiving much interest, as well as agtech and medtech.
Many tech companies in Silicon Valley are regarded as ‘anti-patent’. Is this a fair characterisation?
For more established companies that have become the targets of some ‘bad actors’ in the patent space, this may be partially true. However, most of these companies still value the patent system as evidenced by their continued filings of patent applications. For start-ups and early-stage companies, patents remain crucial to building Warren Buffett’s ‘economic moat’ around their innovative technology and to prevent their critical innovations from walking out of the door in Silicon Valley, which has a very dynamic job market.
You do a lot of work in Germany and China, as well as the United States, what are the big differences you see between these jurisdictions?
Both China and Germany are key markets and increasingly popular filing destinations for a large number of our clients. To service this demand, we have in recent years opened a European office and also established a China practice group, each staffed with attorneys that have deep experience in these jurisdictions. The enforcement regimes in China and Germany are different, as are the traditional ways of doing business. Our China and Europe in-house capabilities enable us to advise our US clients on how to effectively:
- navigate these differences;
- and prepare and file patent applications at these patent offices.
If you could make one change to the current patent regime in the United States, what would it be and why?
The US courts have muddied the waters of subject matter eligibility and obviousness. The recent USPTO Patent Eligibility Guidelines have been tremendously helpful to the patent preparation and prosecution community. A clear demarcation, either from the courts or legislatively, of the respective subject matter eligibility and obviousness arenas is sorely needed.
How do you expect the US patent environment to evolve over the coming years?
Technical innovation has always characterised the US economy and a strong patent system has historically supported this technical innovation. As we move towards becoming a knowledge economy, and technical innovation rapidly accelerates (driven in no small measure by knowledge sharing facilitated by the Internet), the US patent environment must continue to grow and evolve alongside the exhilarating pace of innovation. The patent environment is also going to be challenged to handle new issues arising from technologies that were unimaginable just a few years ago, such as what artificial intelligence can invent.
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Andre Marais is a registered patent attorney and principal at Schwegman Lundberg & Woessner. He has been included in the IAM Patent 1000 listing of the world’s leading patent attorneys (2012 to 2018) and the IAM Strategy 300 listing of the world’s 300 leading IP strategists (2016 to 2018). He brings an ‘in the trenches’ perspective to portfolio strategy and growth. Mr Marais’s practice also includes IP due diligence and opinion work.