Looking at thought leadership in-house, this month we hear from Emily O’Neill, the Head Counsel of IP & Litigation at Spectris plc. Having established the IP function, we ask Emily about her role and some of the challenges she sees the IP sector faces worldwide.
What kind of IP matters do you work on at Spectris?
My team works across the entire IP lifecycle, from promoting innovation e.g. developing an inventor compensation scheme to using our analytics tools to consider and improve patent quality to discussing pruning of patent portfolios as products approach end of life. I have developed a holistic IP strategy recognising that IP in inventions, brand and valuable IP information, provide our products with competitive advantage.
We are seeing a shift in focus from patents to brands and valuable IP information as our operating companies increasingly offer overall solutions to their customers comprising equipment as well as technical consultancy. Following new Trade Secrets legislation in the US and Europe, we have developed strategy to implement “reasonable measures” to safeguard valuable IP information. Having identified employees as the highest risk of leakage we developed tools and agreements to implement safeguards from joiners to leavers.
How do you manage this over the over 30 countries Spectris operates in?
I set policy, provide guidance and training and then audit alongside our internal audit division to identify areas of development. In setting policy, I take a law agnostic approach, identifying the legal principles to provide clear parameters as well as guidance for our IP managers. They are the front line in developing and safeguarding our intellectual property. This year we are focusing on applying Lean principles in standardising process to help our operating companies maintain high IP management performance.
What is currently the biggest difficulty you believe the international IP landscape faces? Do you envision any solutions?
In my view the biggest challenge is a perception that IP stifles rather than drives innovation. This makes sustaining a focus on creating and maintaining high quality IPRs difficult. Headlines which report record damages for patent infringement or the increase in litigation and cost to operating businesses of non-practising entities enforcing weak patents reinforces this perception. In addition, recent decisions of Supreme Courts of patents having a “chilling effect” on research and innovation and overturning decisions of more specialised first instance and intermediate Courts[1] is adding to this negativity. Finally, the increasing impact of Millennials in the workplace and their differing values around sharing of intellectual property will drive further challenge.
I think the antidote is to focus on value and how IP can be used not only to safeguard innovative and creative work but as security for finance. This is particularly valuable for funding in organisations with low fixed assets to use as collateral. Of course, there are recognised structural issues to overcome in using IP as security for lending, such as the difficulty in valuing patents, as well as the lack of mature IP marketplaces for lenders to realise value in the event of default. However, there is increasing interest in leveraging value from IP in this way.
Are there further developments you would like to see in IP, and as a thought leader, how are you working towards developing said change?
Going forward, I would like to see more streamlining and harmonisation of international enforcement. I am Co-Chair of the Enforcement Standing Committee of the AIPPI. Earlier this year we responded to the European Commission’s consultation on the IP Enforcement Directive. The consultation’s aim was the evaluation and modernisation of IP enforcement in the digital age where infringers can be located in a number of jurisdictions.
