Womble Bond Dickinson
Why did you choose a career in intellectual property?
The IP field changes and grows in challenging and creative ways. I enjoy seeing new technologies and the ingenuity behind them. I wanted to use my engineering, business and legal backgrounds to be a part of this, as well as being a part of a field that builds businesses, grows and makes contributions to economies and creates opportunities and jobs for individuals locally, nationally and globally.
What do you think ‘leadership’ looks like in the IP world and how can it be developed and nurtured at an individual level?
Leadership to me is the willingness to pursue a vision with conviction and perseverance. Leadership provides hope to those that follow, whether it is the hope of a new technology, growth, building businesses or contributions to society. In the IP world, it involves a commitment and a belief in the power of intellectual property to help change and improve the lives of individuals and economies. This type of leadership should seek the best for individuals and economies in ways that make a difference. It involves forward thinking and a strong historic understanding of where IP rights originally developed. Leaders must be able to adapt to the changing technology and the growth involved to continue to point individuals, businesses, economies, countries and regions in the directions that continue these types of improvement.
You are a prominent member of the Licensing Executives Society (LES) USA and Canada. What have you learned from your involvement?
I have learned what terrific professionals are involved in the LES USA and Canada, as well as globally. These professionals are content experts and form a tight network of high-integrity and high-quality standards in the manner in which they approach their work. They are highly skilled and yet they enjoy continuing to learn, being challenged and having some fun in the process. They also commit to the improvement of the intellectual capital community with their hard work and giving back attitudes. I also learned the joys of working alongside them and helping them to build a better tomorrow.
You do a lot of licensing and technology transfer work – which areas are driving IP transactions in the United States?
I practise heavily in the energy space, including oil and gas, alternatives, renewables and power and the high-tech space. I believe that an abundant supply and low natural gas prices do and will continue to drive US economic engines for some time. We have seen much of this with the building and expansion of liquid natural gas (LNG) terminals, the building of new pipelines and other infrastructure and higher exports of LNG. Lower oil prices and an abundance of oil will also continue to keep this a price competitive solution for years to come. The low prices in these areas cause consolidation as businesses look for economies of scale of various sorts to maintain a competitive edge (and you will see that some are failing in these environments, which has forced restructuring or bankruptcies). I believe that the energy push in oil and gas, as well as alternatives and renewables, has allowed economic success in the United States and has helped support more manufacturing opportunities (eg, low energy prices).
In turn, this has helped the US economy compete globally for both energy resources and product manufacturing.
There has and will continue to be headway with wind power in the United States, as well as some other alternatives and renewables, but recently the pace in those areas has not been and likely will not be as ‘fast and furious’ as some may hope or desire. These alternatives and renewables are still heavily subsidised and, in a free market economy, eventually all sources of energy and power should be playing on the same competitive field to allow the consumer to benefit from lower prices and have choices on the type of energy and power to be used. Technological breakthroughs could change this competitiveness in future – for example, the Massachusetts Institute of Technology recently spun off what looks like promising fusion-based technology to a new venture. Fusion technology could be a game-changer. Therefore, the continued investment in research and development is important. In the high-tech space, autonomous vehicle software, quantum computing and AI with real world applications have and will continue to grow. In addition, helping businesses position for the future in these areas has been another driver of IP transactions. Further, the use of data and its impact through AI tools and associated business and industrial applications have and will also continue to be big drivers of IP transactions in the United States.
What do you see as the keys to successful deal making?
To succeed in deal making it is important to understand the business models and value proposition to both parties to make sure that value has been appropriately considered. From there, success can be obtained by understanding how each party should and can manage risks associated with the deal (ie, which party is in an appropriate position to manage that part of the deal risk). The other aspect is seeking to understand the other party’s real interest in a technology or the deal itself. By understanding these three key points (ie, value, risk management and real interests) and handling them effectively, success can be obtained in many deals.
What do you believe are the main qualities top-ranked IP transactions lawyers should possess?
I believe integrity, character and having the skills to draft and negotiate effective documents are key qualities. When clients know that an attorney has these qualities, trust can be established quickly between clients and the attorney. From there, the ability to stay with a deal and manage the process with perseverance to closing, if feasible, helps clients to have confidence in IP transactional attorneys. The skills noted come through education, continued training and years of experience of actually ‘doing’ deals. Being able to understand and ‘do’ a deal is where the rubber meets the road. These deals can be complex, move quickly, be time consuming and stressful at times. Being able to stay calm and see the deal’s big picture and the strategy involved helps to achieve client goals and hopefully satisfaction.
There is a perception that the United States is now far less pro-patent than it used to be, is this a fair characterisation?
Perhaps this perception has some foundation based on data and rankings relating to US patent filings, some court decisions and past operational activities at the USPTO, but I do believe this is changing. There is some active legislation and groups that are trying to swing that pendulum the other way and I believe that the USPTO director has sought to change the previous narration which seemed to pitch the theme that patents were not good. I think he has had some success in this manner such that the narration and press is starting to swing back to a more favourable perception of patents. I believe these more recent successes will continue but it will take time. In addition, I believe there is an enhanced emphasis on trade secrets and know-how (similar to the old trade guilds which were used historically before our modern day patent systems) when there is less emphasis on patents and in situations where confidentiality can be maintained in the long-term.
You have done a lot of work internationally, what have you learned from that?
First, I have learned how ‘human’ we all are in the numerous countries I have worked in. People are wonderful and amazing and we all have similar societal and economic needs. It is wonderful to see how each culture is different, how they relate to each other and to those from other cultures, and yet remain deeply human in the process. I have also learned that most countries and regions want technology to help them grow economically, build and provide better lifestyles, as well as to enhance communication, freedom and humanity in general. Cultures communicate and relate so differently and it means so much to take the time to learn that culture and how they relate to enhance opportunities for technology and intellectual capital. Many cultures still need enhanced education, training and experience to develop the technology and intellectual capital in ways that enhance their societal needs. I know that LES and several other professional and governmental groups are committed to helping these cultures to achieve those goals.
If you could make one change to the current patent regime in the United States, what would it be and why?
I would pass legislation to enhance the protection of software and data-based technologies to allow effective patent protection in these spaces. I believe these areas will only continue to grow and, just like other industrial revolutionary technologies that were protected historically, these areas should be protected and there should be clear boundaries about how these should be protected. Until this is done, we will continue with the ‘guild’ strategies of old, where the public will be deprived from important learning in many fields. For example, Google recently announced a breakthrough in quantum computing but will the world ever effectively learn about what it is doing so that we can all learn from it through the patent process or will it take decades to understand, if ever, the details of these breakthroughs? If we have better patent protection in this realm, then these learnings could be applied to numerous other areas in society.
How do you expect the US patent environment to evolve over the coming years?
As noted, I would expect better legislative boundaries on patent eligibility standards, especially in software and data management. I also think that the USPTO and companies in general will have better and faster access to data and prior art in ways that continue to increase dramatically, including less expensively than in the past. This will provide earlier indications of patentability and validity in the patent space. This should allow even further innovation as we will readily see what are real contributions to the art and which are not.
Jeffrey S Whittle
Partner [email protected]
With over 25 years’ experience, Jeffrey S Whittle advises energy and high-tech clients on complex tech transactions and other IP matters. He leads Womble Bond Dickinson’s international IP energy group and is managing partner of the Houston office.
In addition to winning the 2019 Frank Barnes Award, he has been recognised by Chambers USA, Best Lawyers in America and The Legal 500 United States (among others) for his outstanding contributions to law, technology and intellectual property.