JiNan Glasgow George

Given the current state of the US patent scene, what action should rights holders be taking to put themselves on a more secure footing?

Rights holders need to consider a comprehensive IP strategy, including every form of IP rights – from patents and trademarks to trade secrets. Patents will remain anchor assets in any portfolio, but the quality and speed of securement of enforceable rights has never been more important. Patent data and analysis provides a solid foundation, provided it is substantive, accurate and thorough. There is so much noise in the market with patent ‘landscapes’ that are nothing more than high-level patent statistics. We serve our clients with our proprietary Patent Forecast software, which provides AI, analyst research and analysis, plus visualisation to support the legal heavy lifting needed to create true patent strategy and valuable IP assets.

In addition to patent rights, trade secrets should be addressed by every company. Often companies imagine they have trade secrets without taking steps to identify, document, establish and follow protocols to ensure their reasonable protection. Software platforms have emerged to facilitate these required steps, yet many companies have not yet adopted formal tactics, much less strategy for trade secrets. Blockchain-based systems offer security and immutable records – a great resource that could offer solutions for trade secret management.

How do you expect FRAND issues to develop in the United States over the coming years?

Constitutional rights of inventors in the United States should provide access to license IP rights in free capital markets with limited government oversight, and reasonable predictability of outcomes in licensing where enforcement of rights is needed. That being said, FRAND terms to ensure access to standards-based patents will become increasingly important for 5G/wireless technologies, particularly for essential patents covering dynamic spectrum-sharing technologies.

You have worked as an inventor, entrepreneur, patent attorney and USPTO patent examiner. What impact have these different perspectives had on your career?

Each role carries a different point of view (POV) that has affected my perspective as a patent attorney and as angel and venture capital investor. Synthesised, these POVs help to creating a strategy for IP assets that can multiply the value of the business. As an engineer, the product development role is motivated to solve problems for customers. As an investor, I want to see solutions to problems that can be provided at scale in a big or growing market – and with IP rights that allow for exclusivity. As a patent attorney, my vision to support clients’ goals is informed by more than 23 years of experience practising IP law, my understanding of the patent examiner POV to allow valid patents to issue (with search and examination time constraints), and using patent research &and analytics with visualisation by Patent Forecast software to provide data context to develop strategies and execute them.

How do you foster and encourage diversity and inclusion at your firm?

We believe everyone is created in God’s image and likeness and has the power to create a positive impact in the world. As such, our firm supports companies, investors and inventors who want to create positive impact through IP-based innovation. Our team at Neo IP has diverse technical and scientific backgrounds, so we support companies from software and high-tech to biotech and pharma. We encourage everyone on our team at Neo IP and all clients to have creative courage to share their point of view and give voice to their ideas. As a woman-owned and women-led firm, we have always led the practice of law in exceptional ways using data and systematic protocols to ensure consistency, and truth at scale, while making a way for securing important IP rights, even when there seems to be no way.

What impact will the climate crisis have on the development of green tech?

Entrepreneurs and innovators solve problems, particularly where the market is growing and investment is active. Climate issues and green tech are no exception. If people (companies and investors and governments) are serious about reducing their carbon footprint, then anything connected with carbon credits and sustainability will prosper. We deploy IP strategies for US-based companies and in emerging markets where green tech solutions can have even greater impact. Patent data provides free solutions in emerging markets where most companies do not file patents in order to make these solutions freely available to the public.