What led you to a career in intellectual property?
My career in intellectual property flows from my interest in tech and tech businesses. As I went through law school I thought my interest in this area would take me to legal work in the field of energy and utilities. But then immediately after graduation I found myself practising law as a junior attorney at a firm in San Francisco and the Silicon Valley in the early 1990s, and I jumped into the booming tech corporate and transactions practice (along with a generation of my peers). I loved it, and I have focused on transactional work involving intellectual property and intangible assets (such as data) since that time.
How useful are existing patent pools to the current SEP landscape and what do you think can be done to improve them?
Patent pools of various types have evolved substantially over my career, and trends involving the creation of pools with non-profit and freedom-to-operate goals alongside for-profit pools has created a diverse range of approaches and options for both patent holders and licensees. I think there is still room for more creativity in the ecosystem for pooled or structured patent licensing that will create even more nuanced options in the future.
What are the biggest challenges facing your clients at present?
When the pandemic started, many clients saw it as a slowdown (or even a shutdown) of business activity. Now everyone understands that it was not a slowdown, but a restructuring. It is as though the Mississippi River had magically moved 500 miles west – some businesses on the river would shut down, but most would scramble to relocate, restructure and adapt to the new reality, and there would be a value shift, with new and different business winners and losers. And that is what has happened with the pandemic. Clients have been scrambling to understand the nature of the restructuring, what it has done to value, and where the ongoing effects will take us, both in the United States and elsewhere.
Which of your cases or matters have been the most memorable?
In 2020 and 2021 my most memorable matters have all been data transactions. With AI permeating the world of business, data has rocketed up in value and is now a stand-alone asset class that can be bought, sold, licensed, collateralised for debt, or monetised in stand-alone data monetisation business models. It has been fun to be a part of the transformation of the data asset class from a fringe to a core asset with a stand-alone slice of economic and business activity – it has demanded constant creativity as commercial practices have evolved.
How has your management style evolved over the past year of remote working?
I am sure I am not alone on this - remote work means proactively directing substantial effort to rebuilding the lines of communication in the virtual world, personal connections, and supportive infrastructure that I realise now I took for granted in my physical office. This has affected my role as a manager but it has also affected every other professional activity, including client relationships.
What does effective law firm leadership look like to you?
Leadership based on insightful decision making and an ability to communicate with others, bring them along on current initiatives, and do so in a fashion that creates opportunities for others to succeed and advance within the profession.
What would you say are the most important steps of any asset valuation process?
As the old cliché goes, you cannot eat the patents – meaning that intangible assets have limited direct value. (Yes, cryptocurrency proves this cliché wrong, but I think crypto is the example that proves the rule for everything else intangible.) In the world of intangible assets value is driven indirectly through the creation of business structures that exploit the features of the assets at issue to generate revenue (or revenue producing products and services). Correct understanding of the business model is the critical feature of correct valuation and appraisal.
If you could change one aspect of the US patent scene, what would it be – and do you think that it is likely to happen?
I do not think this will happen, but it would be to reverse Alice and admit that all technology and innovation (even innovation that seems to be tied to physical technical implementations) is in fact abstract, and, therefore, arguably algorithmic or methodological in nature. I get that the rights of the patent owner (and the incentives the owner receives) need to be balanced against the public benefit of making innovation available. But we need to get over the misleading distinction between physical and abstract notions of what an invention is and find other ways to strike the right balance.
How do you measure the success of a patent portfolio development strategy?
As noted above, I see patents (and other intangible assets) as working with the owner’s overarching business strategy. In this context, a successful portfolio is one that optimally supports the owner’s business goals – whatever those are.
What are some of the biggest changes that you have seen to the way that data is viewed over the course of your career?
As noted above, the transformation of data from a commercial “also ran” to a standalone asset class that now supports the full range of value generating transactions.
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Edward Black is global co-head of Ropes & Gray’s technology, media and telecoms group, a leader of the firm’s fintech initiative, and actively participates in the data, privacy and cybersecurity group. Mr Black has more than 30 years of experience with transactions involving the acquisition, sale or strategic management of assets and businesses focused on technology, data, media, financial services, brands and related assets, representing both businesses and investors.