Can you tell us about some of the biggest obstacles you have faced in your professional life – and how you have overcome them?
A couple of big obstacles were developing the skills to become a good patent attorney, as well as those to become a good technology deal attorney. I needed both in order to excel in the respective and collective spaces and they are quite different. To become a good patent attorney after my formal education and testing, 10 or so partners who were patent attorneys took the time to invest in and mentor me on verbiage, how to analyse and see differences where others cannot, how to zealously advocate for and respect inventors and how to persevere in difficult cases. Their mentorship, leadership, teaching and sage advice allowed me to develop skills and understand the patent process. To them, I will always be grateful. For the technology deal skills, I had not only about six partners, but also several other non-attorney executives who likewise invested time and energy in me. Many modelled the negotiations and deal work to allow me to absorb and learn, showing me the importance of mentorship, education and the training of others to help improve the profession.
What are some of the biggest challenges facing your clients at present?
Addressing issues with the transition to greener energy, attracting investment capital and the implications of regulatory changes in this area.
How useful are existing patent pools to the current SEP landscape and what do you think can be done to improve them?
Patent pools can be helpful, particularly in the high-tech communication industries, to overcome barriers to entering markets and adjusting to certain standards to reduce the risk of future patent infringement. Royalty rates need to be reasonable and to allow a party to enter the market with minimal risk from those that are members of the patent pool. These could be improved by allowing independent boards to evaluate reasonable royalties and to ensure that these are an appropriate apportionment based on the patents in the pool. Using industry experts on such panels to help develop the reasonableness of rates could also be beneficial.
How do you measure the success of a patent portfolio development strategy?
There are several ways to measure success. These include whether there is a return on investment from licensing opportunities or associated products being sold internally that are protected by the patent, whether a strategy prevents third parties from entering the market and whether the developer of the technology receives a return on investment that is proportional to the amount of time and risk that they took in developing it. The scope of the claims in the patent portfolio and the space they carve out in that strategy can also be significant in protecting the product, as well as in growing the portfolio.
As the effects of the climate crisis become more apparent the race is on to deliver new energy solutions around the world. How are you seeing this reflected in the patent space and what advice do you have for innovators in this area?
This is a really dynamic time in the energy and technology space. Companies are developing greener transition technologies and I think that oil and gas companies, in addition to mid-sized players, are playing significant roles in developing these new technological solutions. Many players in multinational and national oil and gas, and other energy industries with a significant amount of revenue are reinvesting profits back into research for green energy technology. This includes infrastructure, carbon capture, hydrogen technology, various other types of energy including geothermal and hydroelectric, some portable or small-scale nuclear and natural gas among others. I think this transition period is an exciting and dynamic time to be involved in the patent space. However, a significant barrier for much implementation is the infrastructure – this will remain an issue for as infrastructure continues to be built out aggressively. I think you will see the transition accelerate towards the 2030 and 2050 goals that many companies have set for making a significant impact on climate change.
Jeffrey S Whittle
Partner [email protected]
Jeffrey Whittle provides almost three decades of legal experience to clients in energy and high-tech industries. He advises national and international clients on strategic and complex technology transactions, joint ventures, licensing, patent protection, portfolio analysis, and other contentious and transactional IP matters, including inter partes re-examinations, post-grant reviews and derivation proceedings. Mr Whittle co-leads Womble Bond Dickinson’s US energy and natural resources industry sector, and serves as managing partner of the firm’s Houston office.