19 Nov

Jeffrey S Whittle

Womble Bond Dickinson

You have been recognised as a trailblazer and world-class IP attorney by numerous organisations. What has been the secret to your success?

Any secret to my success goes to my clients. They provide interesting work that challenges me and ensures that I stay abreast and develop my understanding of national and global legal and business changes. I then use the acquired skills to bring creative and unique solutions to address client-specific strategies. My focus on offering quality work has built trust, which means that patrons refer me to other potential clients, and which has given me the profile to take on leadership roles in other organisations.

What aspects of your work do you enjoy most and why?

I enjoy the challenge of advising, counselling and providing clients with strategies that create and build value. It is this building of value through intellectual property that helps to raise and introduce more capital into the market, which in turn creates jobs, helps businesses to grow and creates opportunities for long-term success. The market indicates time and time again that IP investment translates to shareholder value and long-term company growth. Helping companies to develop a strategy for IP development, protection, licensing and transferals, and seeing the value that is created as a result of this, provides a satisfaction that goes well beyond any financial rewards for the work.

How has your practice management style changed over the course of your career?

I would say that I have become more strategic when it comes to fulfilling client needs. It is important as a practitioner and business executive to provide a clear strategy and as the environment changes, you have to be willing to adapt to the surrounding environment. I have had to balance being detail-oriented with delegation and mentorship, and working with a strong team gives me even more confidence to work with clients.

What are the biggest IP challenges currently facing alternative and renewable energy companies?

For the first time in my nearly 30-year career, in the past year I have seen multinational energy companies push from the C-suite down for alternative and renewable energy strategies like never before. These companies have become significantly more sensitive to global climate change demands and lower carbon emissions. This has translated into strategic plans and compensation for executives, and adoption of these strategies has then reverberated at a much deeper level. This is not only to satisfy the public and shareholders, but also to become part of what these companies consider to be good citizens across the board and to build quality into the work that they produce on behalf of customers. Therefore, the challenge has been in both the legal environment and company infrastructure. In other words, to get alternative renewables to work successfully, these companies often have to address national and global infrastructure hurdles (eg, production facilities, distribution channels, national power and supply grids, how business is done and regulatory frameworks). Overcoming these challenges requires strong communications and changing perceptions so that investments are made in infrastructure, which provides strong returns for companies and consumers alike. For example, this may involve new distribution channels and new ways to get a product to market, control emissions and address legal and regulatory thresholds in these environments.

What major trends do you expect to see shaping the high-tech industry in the next couple of years?

There will be a continued emphasis on the high-tech industry for the next few decades. The covid-19 pandemic has shown that the high-tech industry is not only here to stay, but will play a major role in driving growth well into this decade and the next one. In the shorter term, within the next couple of years there will be a bigger push into fuel sources and infrastructure that supports electronic vehicles and other alternative fuelled vehicles (eg, hydrogen or natural gas). The way that we gather, mine and communicate data, and the results of this information will continue to grow exponentially. The high-tech industry will allow us to push for infrastructure changes that help all of us in terms of bringing more environmentally friendly technologies to consumers. Advances in high-level computing, including AI, cybersecurity and data privacy protections, will continue to affect our everyday lives and the way that we do business.

How do you stay abreast of the latest industry developments both in the United States and internationally?

I start each day by reading materials that are published nationally and internationally in leading journals, online and in newspapers and magazines about intellectual property, technology, energy, economics and current events. I also keep abreast of changes that occur in the law and in different jurisdictions, attend continuing legal education classes and other educational forums, and work to stay informed in various other manners. By reading and studying, and having the time and discipline to do this for one to two hours every day, I can synthesise, comment, write and speak on IP and technological issues. It also allows me to provide strategic guidance for clients as the markets and environments change.

What are some of your top tips for building trust and understanding with clients?

First and foremost, I encourage others to approach their work with integrity. Clients want this. If you approach your work in an honest and committed way, where you can not only perform the work, but also execute it in a timely manner, this translates to integrity, which, in turn, builds client trust. It is often hard for IP owners because it generally takes a long time for the goals of IP development and strategy to be successfully accomplished. In many instances, it can take one to three years for clients to file for patent protection and build a good patent portfolio. This can also be true for trademark registrations and establishing brand significance. Staying committed and on task, and helping clients to watch their IP strategy play out successfully, builds trust and confidence. This can be difficult in certain environments, but providing that integrity and commitment to the work often translates into both short and long-term success for everyone.

How is the evolution of the knowledge-sharing economy affecting the US IP transactional scene?

The knowledge-sharing economy has had an impact on the US IP transactional scene in many significant ways. First, clients have higher expectations and meeting these helps to differentiate individuals, firms and companies. Patrons expect us to have more understanding and depth and to provide information in advance so that they can learn from the advice provided as a leader or as a high-level attorney, both from a legal and business perspective. Clients want to see this combination of legal and business judgement brought to transactions, problems that need to be solved and projects that need to be accomplished in effective ways. Second, the knowledge-sharing economy demands that, while a deal is going on, we are learning information much faster than before. In performing a diligence project, for example, we can obtain a lot more in-depth information even more quickly and provide strategic advice instantaneously.

Subject-matter eligibility remains a complex topic in the United States. What can be done to provide greater certainty to IP owners, and how likely is this to happen?

In the current environment, the strongest way to provide greater certainty for IP owners on subject-matter eligibility is to address this with federal/national legislation. By addressing it from a federal congressional/legislative perspective, the law and guidelines will be more defined. Subject-matter eligibility consistently seems to be an area in which cutting-edge developments merge with more modern ways to conduct business in various economic situations. While this can be complex, legal guidance that provides more defined lines for commercial growth and protection seems to be the most effective way forward. Changes in technology and subject-matter eligibility should be flexible in many situations; legislation that anticipates this in an agile manner can be powerful in helping economies across the globe to prosper. I think that legislation is unlikely to appear in the short term, but I do think that it will happen in the next three to seven years. In the meantime, it would be helpful if the US Supreme Court, as well as the top courts in other countries and geographical regions, would take on more of these cases from lower courts to help provide guidelines while legislation is being contemplated.

Why is strategic patent knowledge important to deal making?

Strategic patent knowledge is important because when you understand patents in depth, and the associated strengths, positives and negatives, bugs and worms, title and all types of issue that can arise within transactions, it helps clients to identify value and risk, and adjust game plans to move a deal and the results of a deal to long-term success. Just because someone says that they have a patent, many people initially think that something significant is protected, but this may not be true. For example, they might have something protected, but what is protected may not have value to it. If there is no interest in the technology, then little value can be ascertained. So it is important to be able to assess the patent portfolio or the patents at issue to see whether there is value that can be extracted in a way that really adds value to the client. In many situations, there is also often value in saying, as an acquirer, “I can take that portfolio and continue to add or build value” (eg, by building to pilot, scale and commercial levels to bring the technology effectively to the market). This may also be where significant risks are identified. If you are looking at a situation where a target is at risk and you are trying to minimise this risk, you may not want to conduct the transaction or you may want to do it in a manner that manages this danger more effectively to avoid problems further down the road.

Jeffrey S Whittle

[email protected]

With more than 25 years’ experience, Jeffrey S Whittle advises energy and high-tech clients on complex technology transactions and other IP matters. He leads Womble Bond Dickinson’s international IP energy group and serves as managing partner of the firm’s Houston office. Mr Whittle was the 2019 winner of the Frank Barnes Award and 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.

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