Jeff Lindsay – IAM

You have been named as ‘one of the world’s leading IP strategists’ by IAM Strategy 300 every year since 2015. What has been the secret to your success?

It is a well-kept secret – I am not sure why some peers have nominated me and how the decisions are made by IAM. I can think of many IP workers who strike me as more successful. But I am grateful that there are peers who have appreciated what I do. I think it helps that I have written a book and enjoy public speaking, and have had many opportunities, especially in China, to speak at IP events. So perhaps the secret is having kind peers and having had tremendous opportunities that came from leading an IP team in China where intellectual property is greatly valued.

What are the most crucial steps of an IP monetisation process?

Perhaps most crucial is creating value in the first place with a strategy that considers not just the needs and strengths of the business but also the role that the invention could play in the future in other settings or with other business models.

Given the current global volatility, what are your recommendations to future proof an IP strategy?

Several risks need to be considered. IP rights depend on clear laws and reliable, fair enforcement, but the meaning of a seemingly clear law can change overnight and enforcement can be long, costly and unpredictable. One must have the imagination to prepare for such legal risks and develop back-up plans. This means diversifying your IP portfolio, which can involve growing in other nations where IP law may still be healthy, but also using multiple forms of protection: patents, trademarks, trade secrets, and designs.

Competitive risks also require imagination in order to prepare. This is where the theory of disruptive innovation can be invaluable – this is part of what we seek to do in creating disruptive intellectual property. Imagining what current or future competitors might do with new business models and new technologies to threaten one’s business is surprisingly difficult and painful for many companies. Nothing is future proof but a vigorous imagination, coupled with broad technical and business model awareness, can help create a sound IP portfolio with a chance of prevailing in an unpredictable future.

Kathi Vidal was appointed head of USPTO earlier this year – what difference, if any, have you observed so far?

The USPTO recently has taken many positive actions, such as stronger training through webinars to help practitioners and others better understand many aspects of patent practice. There have also been some proactive steps in addressing the complex issue of virtual designs and in improving their website. Meanwhile, many key concerns of inventors and SMEs remain. We still need to address the problems in the PTAB and in the operations of the USPTO that stand as barriers to innovation. We need to do more to help inventors obtain meaningful protection to incentivise innovation.

You have experience working with large corporations in both the United States and Asia, including serving as head of intellectual property at Asia Pulp & Paper (China) in Shanghai. What are the key differences between the two jurisdictions that clients should be aware of when devising enforcement strategies?

The primary difference, in my opinion, is in the directions of the two IP systems. The great paradox from China is that property rights are not supposed to exist in a formally Communist country, yet they have gone from no IP system at all in 1984 to one of the world’s most successful IP systems today. That is still a surprise to many people in the West, but it is something that cannot be ignored. A successful IP strategy needs to consider China. If you do not need to file there, you do at least need to anticipate competitors from China not just following but out-inventing you, and perhaps already having key prior art. Given that China has been rated by some experts as the number one jurisdiction for enforcing a patent, do not overlook the importance of intellectual property there.

Meanwhile, the United States struggles with a decline in intellectual property. Patents are difficult to enforce and too easy to invalidate. Those pursuing patents often find examiners or entire art units in the USPTO that seem hostile to patents. Media voices and politicians also often seem hostile to intellectual property. In spite of US headwinds, there are great opportunities for innovators, but sound IP strategy is more important than ever.