What is the biggest career challenge that you have faced and what can others learn from how you overcame it?
Deciding to start my own firm was a huge challenge. I thought that the most difficult aspect would be working as an IP lawyer, but in reality, it is managing people as a partner at the firm. The firm’s success is underpinned by its personnel. You should always strive to lead people in such a way that they trust you and that you bring out the very best in them. My advice for other leaders is to never forget that your people are your most important asset.
You have been entrusted with patent work by companies at the top of their industry. What are the key skills for a top-level IP professional to hone?
You need to understand your client’s business. An IP strategy that does not fit in a great business strategy is useless. When advising clients, I am always mindful of each company’s challenges and goals. Where do they do business? What are the products and/or services that they sell in those markets? What keeps my client up at night? I also spend considerable time ensuring that my communication style is highly effective. Some clients want information presented in a very concise manner, while others want to see all the rationale behind the recommendation. I also find that they are equally interested in my business advice, and IP advice often has to be mixed in with business advice to be effective and meaningful. In most cases, the IP advice has to be tied back into the company’s business goals in order to make sense of the larger picture.
Can you share with us your top three tips for ensuring long-lasting relationships with international clients?
First, being responsive is key. When clients come to you with questions, they often need answers yesterday. Sometimes providing a quick ‘guesstimate’ of the recommended outcome is all that they require, as waiting for a well-researched answer that boils down to a ‘maybe’ can be quite frustrating for them. Second, you should always try to go above and beyond what clients are asking for and add value in non-billable ways wherever you can. Third, if you can make them look good in front of their patrons or the people to whom they report, this is also very helpful. And never forget that clients never forget!
What does a watertight IP enforcement strategy look like to you?
One in which you keep an eye on how your competitors will evolve their products, particularly if they are products that are not covered by SEPs. Patent claims should be broad. Maintaining a US continuation patent application ensures that you always have a patent application pending in the United States, which means that you can evolve your patent claims to cover a competitor’s product – or at least attempt to do so. The enforcement strategy should also exercise caution and be underpinned by careful thought and analysis. Going in guns blazing is not always the best course of action! Study your client’s competitors; examine what they do, what they produce and how they act. Then, based on that study, formulate a strategy that has the highest chance of getting your client what it wants.
How would you like to see the rules governing the patentability of software and business methods in Canada and elsewhere in the world change – and how likely to do you think it is that such changes will take place?
I think the concerns around the patenting of AI and machine learning are going to motivate government decision makers to converge on standards for patentable subject matter. Most patent applications filed today are for computer-implemented inventions. Key innovations in the future will be in the software realm, particularly in areas such as AI and machine learning, cybersecurity, the Internet of Things, cleantech and autonomous vehicles. Changes that affect AI, machine learning and other areas are coming. It will be a matter of what form those changes come in, and when.
Natalie Raffoul is a world-renowned IP lawyer and patent agent with particular expertise in patenting software and IP licensing. She has been consistently ranked among the world’s leading patent practitioners in the IAM Patent 1000 annually since 2014 and has been shortlisted as one of the most highly recommended patent prosecutors in Canada. In 2020 she was recognised in IAM Strategy 300: The World’s Leading IP Strategists. Ms Raffoul obtained a degree in electrical engineering from Western University and holds a JD in law from Queen’s University.
Click here to see her IAM 300 2020 profile.