How Many Patents Do You Need? Logitech’s Kevin McLintock Tells Us

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Director of Worldwide IP Strategy Kevin McLintock developed the IP strategy at Logitech in 2011 on a guiding principle of “establishing a strong freedom to operate platform.”

He’s translated it into a tactical program that has completely overhauled priorities, program management, budget allocation, and patent filing activities. Informing his short and long-term decisions in the last five years has been the always present need to ”build the right patent portfolio.”

The right number will probably be more than you thought, and much more than your CFO expected. It’s typically expensive in terms of R&D investment and IP protection. It’s not simply, however, answering “How many patents do you need?” as a quantitiave exercise.

What’s more important is creating the right balance in the portfolio. “Getting it right” – more realistically, as close to right as you can – is critical because the consequences of “getting it wrong” are enormous.

Kevin spends a lot of time on his portfolio because Logitech’s future rests on invention and innovation in highly competitive and dynamic areas such as digital music and virtual reality.

Here is his process for optimizing the size and balance of his patent portfolio.

How many patents do you need at Logitech?

Q: Why is getting the number and balance so important for in-house counsel like yourself?

Kevin: Getting the portfolio right is one of the most significant parts of my job. The risks are very material. In literal terms, if somebody were to sue us, we may have nothing to countersue or to defend ourselves with. If we are entering a new product category or market, we want to have the groundwork of a portfolio already established to provide flexibility in how we move forward.

Q: Is there a right number?

Kevin: Arriving at the right number is especially difficult for a company of Logitech’s size, with such a diverse product portfolio. There’s no standard playbook I can just copy. I know we don’t have the right number of patents at Logitech right now, but I also can’t tell you what that number is. More importantly, I don’t dwell on it either.

Don’t focus on questions you can’t answer. Far more relevant is actionable information so I focus on the question that does matter: “Do I have the right portfolio to support Logitech’s business goals?” I could have a very large portfolio in one category, but they may be of little strategic value. A smaller portfolio of highly strategic patents would be of much greater value to us, and be more than sufficient to support our objectives.  

A Deeper Dive Into Technology

Q: How do you answer the “right portfolio for our business” question?

Kevin: I repeat the process I used to create our overall IP strategy, but go deeper into the underlying technology. A lot more time spent with Logitech engineers and scientists helps me balance patent numbers with our portfolio needs. I look at:

  1. Current Products and Markets

We need the right number of patents to cover our current products and protect current revenues. We file patents, utility applications to cover the basics of what we’re doing, design patents for very specific products, and foreign patents to address manufacturing or market issues in specific geos.

  1. Forward-Looking Opportunities

We then look to the future. What do we think we will need in forward-looking areas? We may not be doing something now, but it could be different in 3-5 years. Do we have some seed IP that will open up these areas for us?  

  1. Future Markets Where We May Not be Active

How many patents will we need to have a meaningful presence in future areas that we may not even want to formally operate in? Look at this very closely. The answer could be interesting to both competitors and future partners. If you believe your seed technology is notable, and strategically significant to competitors, protect it.

  1. Future Enforcement

Looking at each product category from an enforcement standpoint. Do we have enough, either to take action against someone else, or to defend ourselves if someone takes action against us?  The number will vary based on the strength of the IP and the type of entity we are targeting.

Q: What do you do next?

Kevin: Put my objective thinking hat on. Who are the significant competitors in each business area? Who do we think could become one? Identify and aggregate the overlaps, then calculate the number of patents I think we need. I recommend you do the same; start at the end, then work backwards to your current portfolio. Identify the gaps, then decide on a granular level what needs to change.

Building a Portfolio is a Group Effort

Q: Clearly, this isn’t a solitary job. Whom do you work with on this? I assume you work closely with strategic planning, sales, and the Head of R&D?

Kevin: I recommend another four-step process:

Step One is the big picture. Map your operational future. Talk with everyone to understand where the business is and where it is going. Which markets do you think are important? What manufacturing locations are important? Who do you compete against now, and what competitors do you expect to exist at some time in the future? Sit down with unit leaders to understand the goals for each business unit and product categories. You probably did a lot of this work when creating your overall IP strategy so reuse what you can.

Step Two is figuring out the portfolio’s ideal composition. With the information you learned and the data you collected from Step One, an IP professional’s next step is figure out ideal composition in terms of protecting future products and supporting operations in relevant countries.

Look at the strength of your current portfolio. Are there concentrations in different technology areas, or different product categories? This is a very “today” thing. In certain strategically important areas, you might conclude that you’re doing well.

It’s a rigorous intellectual exercise with few rules, many hypotheses and even more unknowns. Here is an example: “We have a good history of developing IP in this area. We’ve got a horde of patents already filed in this particular area. We’re clearly on track. If something were to happen today, however, if we were concerned about certain competitors, or regions, would we be in good shape or not? What would happen if the same scenario played out in two years? You consider and juggle many, many scenarios.

Step Three is the engineering reality check. I usually start with the VP of Engineering. We map what should comprise our portfolio against the company’s actual level of innovation. Then we objectively determine whether we can realistically achieve our goals.

Step Four is financial. I compare what we want to do with the budget. Can we afford to do all of the wonderful things that we’d like to do to support these goals? Do “what we want to do” and “what we can afford to do” align? Usually, the answers and alignment are not as hopeful as you’d like. Then it is time to prioritize.

You Can’t Do Everything

Q: How do you organize and prioritize everything that you’ve learned?

Kevin: Organization is on me. Prioritization is a group activity. I return to the business group leads. We discuss the information I gathered and the previously discussed priorities. It’s usually pretty obvious that we can’t do everything, so I typically recommend adjustments, including focussing on areas where we can maximize portfolio effectiveness.

I work with business leaders to determine which trade-offs they’re willing to make. If they’re unwilling, you have to adjust. Can you get more budget? Can you raise the innovation level within a business group? If there’s consensus on the business side at Logitech to prioritize certain things, then we can usually focus the brilliance of our engineering team to deliver. If we can’t, we have to prioritize differently or alter our portfolio development plans.

Q: Developing the portfolio roadmap appears very similar to developing an IP strategy?

Kevin: It is. The difference is big picture vs. tactical implementation. A common need with both, though, is visibility. Visibility among business unit heads is vital. You’re balancing risks and rewards now and in the future. You’re trying to figure out how many patents do you need. Their consensus and implementation support helps a lot. I coordinate these discussions and ensure everyone has the right information. Once we provide those details, we agree on a strategy to go out and file the right patents on as many quality inventions as we can.

Thanks Kevin for the fantastic advice. For younger IP professionals finding their sea legs, perhaps overseeing a corporate IP program for the first time, it’s vital to create and nurture lines of communication throughout the company.

Work hard to create and raise visibility for IP in your organization, because it will make it far easier to collaborate with everyone you need on your side to be successful.

Partnering With Salesforce to Deliver IP Management in the Cloud

Eighteen months ago, we published a two-part series, “Why the Legal Industry is Embracing the Cloud.” (If you missed it, read Part One and Part Two). In detailing the many advantages and benefits that our early customers were seeing, we addressed some important concerns and answered many questions about using cloud-based technology to manage IP programs.

Since then, our sales have tripled as cloud computing and Software-as-a-Service enthusiasts have become far more common inside corporate legal departments.

The release earlier this week of the IDC Salesforce Ecosystem report illustrates that our experience as a fast-growing software vendor isn’t unique. Many other companies have similarly built their technology and revenue streams by partnering with Salesforce.

The report’s authors at International Data Corp. crunched a lot of data to estimate what all this sales activity means now, and what future opportunities may look like. It’s a pretty rosy view.

The Numbers

AppExchange 4 million installs -

We have certainly seen some important shifts in the readiness of legal and IP leaders to embrace the cloud. Salesforce has obviously seen similar buying behavior in other verticals.

Overall, while public cloud computing accounts for less than 5% of IT spend, growth is much faster; since 2009, cloud growth has been 4.5X higher than IT spending rates. This number is expected to rise to 6X through 2020. Granted, this growth is expansion of a small share of the $2 trillion IT market, but the future is clearly upwards and to the right. Salesforce customers have also installed more than 4 million apps from the Salesforce AppExchange.

This mirrors what we’ve seen with the trajectory of IPfolio.

IPfolio: Member of the Salesforce Economy Since 2012

We’ve been with Salesforce since IPfolio’s birth.

At a company level, we identified an opportunity to save the IP industry from the tyranny of traditional, slow, inflexible and maintenance-heavy on-premise deployments.

Our “Fresh new approach to IP management” vision rejected the world of legacy system maintenance and the inevitability of inefficient on-premise software upgrades. Translating this into a product roadmap, we wanted to deliver a customer and user experience that emphasized ease-of-use, accessibility, efficiency, flexibility, and scalability.

A Software-as-a-Service delivery model built on the cloud was the obvious choice. The most effective cloud option was clearly the Salesforce ecosystem. We were confident that by partnering with Salesforce we would minimize development time and engineering requirements, while maximizing our Go-to-Market opportunity.

From the perspective of a fledgling startup with aspirations as an industry change agent, we couldn’t ask for anything more.

Partnering With Salesforce = One of the Best Decisions We Made

Well, here we are almost five years later. We haven’t been fledgling in a long time, and look forward to celebrating our five-year anniversary in April 2017.

IPfolio has evolved into a well-respected, very competitive, enterprise-grade product. Our customers range from hot startups in renewable energy to multinationals and global brands. They include a Global Top Ten financial institution, two of the 10 most valuable companies in the world, one of Canada’s largest energy companies, and a German multinational with over 400,000 employees.

It is easy to attribute much of this success to the fact that our partner is the world’s fifth-largest and fastest-growing enterprise software company. Salesforce handles what they’re really good at while we stick to what we know.

By focussing on domain expertise – our team’s decades of legal/IP industry experience – while effectively outsourcing much of our IT overhead such as hosting and security to category experts, we’ve been able to stay lean and agile. We have been able to dream big, while retaining a corporate culture where we’re still “young, scrappy and hungry.” (Shoutout to the musical Hamilton).

Evangelizing the Cloud to the Intellectual Property Community

Since 2012, we’ve been preaching the merits of the cloud in terms of robust, reliable, scalable and secure applications. We’ve spent a lot of time at industry conferences talking about them.

Frankly, we’ve punched well above our weight in terms of industry thought leadership, evangelizing the new world of application delivery, and inviting everyone to take a close and objective look at cloud-based IP Management.

Every IPfolio customer has heard us tout the advantages of true cloud-based solutions:

  • Total Cost of Ownership (TOC)
  • Anywhere productivity: Log on, log in and start working
  • Streamlined Process and Ease-of-Communication: Locally and globally
  • Time-to-Value

Software TOC On-premise vs. cloud

They’ve also heard us lay out the benefits specific to intellectual property management:

  • Increasing Strategic Visibility: Connecting IP assets to products, geographies, markets, and revenue streams to ensure alignment with business strategy
  • Data Integrity and Accuracy: Efficient reporting, inventor awards administration, and tracking of prosecution milestones and costs
  • Simplified Access for External Parties: Total control and management of external access to online IP records
  • Idea Tracking: Inventor Portals and Review Boards to track and monitor evolution of IP assets from invention to outcome

Happy Customers: Alignment of Expectations and Experience

A source of great satisfaction has been the alignment between what we say when speaking with prospects and their later experience as customers.

You know you are emphasizing the right things when customer feedback mirrors your marketing messages. Customer reviews of IPfolio on the Salesforce AppExchange universally confirm this. Here are a few:

“Perfect IP Management Tool”

“Customizing fields and layout just wasn’t possible with our large, clunky docketing system. From a data management standpoint, the idea of being able to set up a clean, user-friendly interface, and make workflow and UI modifications on the fly made switching to this product a no-brainer.”
Kelly Simpson, Patent Paralegal Manager at Facebook

“Great IP Management Tool”

“IPfolio is a fabulous tool. It is customizable, user friendly, and the reporting capabilities are great. It meets all our IT security guidelines, it is modern and has greatly enhanced our productivity and organization.”
Jodi Rappe, Intellectual Property Specialist at NuScale Power

“The Right Tool for Managing Your IP Portfolio”

“We needed a tool for managing our IP from conception to commercialisation; a tool that would allow us to produce the reports we wanted and to adapt as our IP workflow changes. We got exactly that and more with IPfolio. It is an intuitive tool to use, with excellent technical and customer support.”
Wayne Jaggernauth, Intellectual Property Officer at Nikon Metrology

“Customized to Fit”

“The flexibility to configure our data and the integration with PAIR information was a selling point. However, it was the ability to create an active dashboard with a unique workflow that sealed the deal. Implementation has been the easiest part of the entire process.”
Shelley Smith, IP Operations Specialist and Paralegal at a Big Data company

Moving Forward

The benefits of Salesforce enabled us to execute on our initial business plan and iterate our product roadmap much more effectively than any other route. Phase Two is even more exciting.

Although it wasn’t part of our original plan, the flexibility of the Salesforce Ecosystem enabled us to evolve IPfolio into an entire IP-centric business platform emphasizing Automation, Collaboration and Connected Services. We’ve already begun evolving IPfolio by partnering with complementary IP-related technologies and service providers.

It’s definitely an exciting time to be part of the Salesforce Ecosystem!

IP for Startups: What to Do When You’ve Already Gone Viral

 Image result for pokemon go gameplay

The viral PokemonGo phenomenon this summer and’s meteoric rise and brief independence illustrate that, despite the “overnight success 10 years in the making” path characteristic of most startups, success can come unexpectedly quickly.

This is both good and bad. While a hockey stick revenue curve is often celebrated by the CFO, growth can be very challenging from an intellectual property management perspective.

For the latest installment of our IP Answers series, we reached out to John Chandler, an Associate with the Toler Law Group in Austin, Texas. During an eclectic 12-year IP career, John has helped scores of entrepreneurs and companies create and evolve IP strategies and plans. He’s a perfect resource to discuss IP for startups, IP management priorities for young companies, and “Fire Drill IP Management” when growth suddenly jumps far beyond initial projections.

Note: John’s comments are his personal views, and are not representative of those of the members of the Toler Law Group. His statements should not be relied upon for legal advice in any particular circumstance or situation.

Background: IP Watch Dog recently published a review of the patent portfolio consisting of three location-based gaming patents of PokemonGo developer Niantic. Thirteen months after ecommerce titan Marc Lore launched to compete against and other discount retailers, Wal-Mart acquired and its ‘gain sharing’ retailing technology for $3.3 B. The patents of are aready involved in patent infringement litigation.

Q: Thanks for joining us John. Most companies launch with the expectation that the road to success will be long, so a common belief is that there will be time to take care of the IP down the road.


A: First, it is really important to understand that surprising success – I’m not just talking about Pokemon apps or high-growth VC-funded Silicon Valley companies – can happen to even small companies.


One of my clients, a mostly-service franchise in the U.S., recently and very unexpectedly, took off in Great Britain. With the opportunity to protect a potential future franchise network in Britain, we looked at everything based on what she would need in the U.K., when she might need it, and what she could afford. We initially filed a PCT patent application in the US with a view toward seeking patent protection in the UK, and have planned a second patent application to be filed later this year.


We also did a UK trademark clearance search and researched domain name options connected with her business name. In the next year, I also expect we’ll have to find a local in-country attorney to handle business and franchise documents. None of this work or the expense figured in her 2015 business plan but the need arose very rapidly.


Q: What’s your role with a client like this?


A: When something really gets rolling, people too often forget to sit down and take a look at how to create protection in front of the business and the IP. This is my role as a business and legal counselor — to anticipate legal needs before clients see a need. A little investment up front can save many legal dollars just a few weeks or months later.


Especially with first-time entrepreneurs, I’ll spend a couple of hours with new clients to put out fires that they don’t know are burning. Next, I’ll identify potential business assets, and put them into what I call “Boxes.” For me, Boxes represent a legal protection available under the law. Each Box typically comes with a price tag, a deadline and action items. Clients can then easily prioritize which Box is right for their situation and budget. Also, clients can more easily understand what does not fit within any Box. If the business asset doesn’t fit within a Box, I can’t put a legal protection on it. Some Boxes are out of reach or don’t strongly fit the focus of the company.


In my client interviews, I first look at IP through the lens of how people and customers find my client. If you are already a viral success, people have obviously already figured out how to find you. Usually, though, I’m working with pre-viral companies, many of which don’t have any marketing experience or plan.

A domain name related to how people know you is step one. I think the domain name is really critical for a startup. It is a good lead-in to trademark protection. You want to be found often and you want people to quote you. The recent and huge expansion of available Top Level Domains means that you should be able to find a domain name that aligns with your marketing strategy and business name. If your app is called Fire, can work. If you don’t have a really good domain name, you can instantly reserve one. Grab it before it is gone.


In terms of trademarks, I’ll start by looking at everything from protecting the brand and domain name, to hashtags and slogans. Understanding that trademark registration can take 5 months or more, some of these are on a slow burn, and some need immediate action for protection. It is best to commit to just a few terms initially, and use them consistently and properly over time.


Q: What comes next?


A: In terms of IP categories, it’s domain name, trademarks, then patents. The order is based on both time, or time-to-result, as well as money. Can we create any patent assets? Perhaps, but they take the longest and cost the most.


For patents, even taking and paying for the expedited option, getting a patent takes a year minimum. As far as cost, if the cost of a utility patent is out of reach, a workaround is a design patent. Design protection is too often overlooked, but it can be very useful if your startup is more on the creative, expressive side. If a company has something unique about their customer facing website or mobile app, I’ll look at how we can perhaps protect the user interface. This is especially useful when the computer back-end processing is not totally ironed out, new or the interesting part of the business.



Q: Do you always look at patenting in terms of product or service protection?


A: In my experience, there is almost always some kind of technology involved in the business that you can protect, particularly for companies that blow up. Often, the unexpected commercial success and urgency to maintain customer satisfaction can draw your attention away from protecting the core value in the underlying technology. The tech might not be 100% relevant to whatever has made your suddenly hot right now, but it may have long-term value, which is part of the pitch when seeking funding and thinking exit strategy.


Although a pending patent application doesn’t offer any protection until the patent issues, pending status can help during fundraising and marketing. Some tech investors are really leery of investing if they haven’t had a chance to determine whether something is patentable and could create value 5, 10 or 15 years down the road. In addition to this, if your exit strategy is a merger, or acquisition by a larger company, patents need to be part of your roadmap.


Q: Thinking about the relationship between a company and its customers, it is usually defined in the tech or media sectors by Terms of Service (TOS) or Terms of Use (TOU). How does IP then align with a startup’s sales model?


A: TOS and TOU documents are very important for categories such as software, SaaS and social media. In them, you define the boundaries of your relationships so that people understand what you do, and what you will and will not accept in terms of responsibility – yours and theirs. The obvious example is Facebook whose TOS basically say that Facebook is free to use anything uploaded to the site.


By way of example, if your business enables people to post and share content, warnings such as, “Don’t post stuff that’s copyrighted by a movie studio,” are standard. If you offer an API, you need to spell out limitations and expectations. Limitations in the TOS/TOU should include guidance on use of your trademarks and lots of other things. Don’t write your TOS/TOU just for litigation purposes. Think about setting expectations and shaping perceptions of your company in your TOS/TOU, along with detailing what you consider your IP and what you consider protected. If use of your website generates money for you and your end users, include details on how money is made, affiliate marketing, duration of data retention, and on and on. At least clearly define who owns what, when and how. Often, the TOS/TOU is an after thought. No one makes time to review that when your company is blowing up.


Q: PokemanGo was almost instantly global. How does geography fit in?


A: You can seek legal protections in other countries but the price quickly mushrooms. If you aren’t sure now about where you may need future protection down the road, you can do an initial filing with the US patent office under the patent cooperation treaty or PCT. It bookmarks your place worldwide at first. I’ve done it many times to provide my clients with flexibility. Later, you can identify where the business has really taken off and narrow down the countries where you want the long-term patent protection.


Trademarks are less time-sensitive, but can be started early if the revenue is there. I recommend that you let the revenue guide you on a country-by-country basis. You can built up world-wide trademark protection a little at a time. Of course, expand your domain name portfolio and add other languages on your UI on a weekly basis if possible.


Q: What is your advice on employment contracts and IP assignment?


A: IP assignment is a good segue into something I haven’t mentioned yet, which is nonetheless absolutely critical. This is the formation document. Before you even think of employment contracts, you need to make sure that IP protections are defined in the bylaws of incorporation or the operating agreement of the LLC.


There may only be four of you in a garage moonlighting on weekends, but everybody should be obligated to sign over their contribution – whether it’s the trademarks, the technology to be patented, media content, cash or time commitment.


Personality conflicts and evolving priorities among founding team members are common, and founders can sour on each other. Suppose two of the four want to leave. This scenario and succession steps need to be spelled out very carefully in the operating agreement or the bylaws of the corporation – not in a term sheet or napkin scribbles. If someone leaves, how do you value the company? What do they get to keep? If she is the technical lead or chief developer, does she have an obligation to assign over the source code? Is she entitled to a copy? Is it under password protection on a server she can still access? Does she have any rights at all to it? Will she publish the secret sauce later as part of her research? What are the pre-existing obligations?

Something aspiring entrepreneurs often overlook, as well, is the economic value of what you create regardless of commercial success. While you may have failed to create a viable company, you may may have something really valuable that you can either open source or sell as an asset. Your corporate documents must cover these scenarios.


Q: The employment contract and assignment language address these points for employees and contractors?


A: Exactly. In the rush to hire and get some revenue in the door, companies often overlook what’s in their employment agreements. Look in your contracts to ensure they include confidentiality, invention assignment, and non-compete language and clauses. Lock these down so you know that the creative aspects will remain with your startup, and former employees can’t leverage your innovation, business processes and customer databases. Or, if you want to be open and informal in the relationship, spell that out in writing so that everyone has confidence in the venture. Don’t overlook copyright assignment, either.


If you don’t include details in contracts, you will not have ownership and control of what employees and contractors created on your dime. I have seen this far too many times, and spoken with too many frustrated CEOs, to think it is uncommon.

Q: OK, let’s circle back to the PokemonGo example. It may not equate to the viral hit of Summer 2016, but let’s assume that my app blew up last week. I haven’t done any of the startup IP best practices you just laid out. What should I do now? What is my priority list?


A: First, sudden growth doesn’t always require virality. The “secret” can simply be a lot of funding. If you land enough VC funding, the road from a small scrappy team of 10 to, say, an org-chart of 100 can be a very fast ride. Whatever the cause, my catch-up IP management blueprint would be something like this: 


  1. Domain Registration

Review and register domain names related to your existing brands and related trademarks. Review where all domains point.


  1. Trademark Clearance

Update your trademark clearance results for your current and expected markets.


  1. Trademark Registration

Register relevant trademarks in use or soon-to-be-used with the appropriate authorities. Review proper use of trademarks throughout the company.


  1. Usage Contracts

Terms of Service and Terms of Use (“TOS”) define what you provide and how people use your service. Make sure the TOS, other legal notices and the functionality of your website, app, product or service comply with local and country requirements and restrictions. Privacy and data use restrictions vary widely across countries. Is a click-through mechanism needed for aspects of your website?


  1. Restrictions

Review import/export restrictions for the countries in which you operate. Review your existing contracts with vendors, contractors, etc. for their contractual restrictions.


6. Employment Contracts

Ensure that your rights are not compromised by incomplete or absent contract provisions. Make sure new employment contracts harmonize with corporate values and corporate documents. Re-sign existing employees to a new contract if the old contract won’t work. Ensure assets remain with the company.


7. Patent Protection

Depending on your budget, uniqueness of technology and innovations, definitely look at pursuing patent protection. Don’t hesitate to contact a professional because patent deadlines are unforgiving. There are ways to delay the relatively high expenses involved.


  1. Physical and Electronic Security

Review existing mechanisms to safeguard the business documents, legal documents, innovations, business reputation and financial assets. Would a quick computer security audit and operational practices review be beneficial?


  1. Corporate Culture

At least start with a short meeting to get all employees on the same page in terms of expectations of how you value everyone’s contributions and IP. Explain the steps being taken to protect the IP. Explain the basics of your corporate expectations of business conduct, computer use, and operating and security procedures. A quarterly update can go far to show strong leadership and vision.


Q: Is there anything else that a startup should think about?


A: In an early-stage company, don’t underestimate the basic bread and butter legal provisions or permissions. IP for startups doesn’t have to be convoluted. Have someone experienced review your documents and policies to ensure there is nothing that can lead to an easily avoidable, crushing liability or lengthy legal dispute. Don’t let a legal conflict distract the business operations. A little attention early can go a long way toward avoiding big problems later.

A big thank you to John for his time and expertise. You can reach the Toler Law Group offices at

Cultivating Patent Innovation: the Case of Financial Services

Blog financial


Traditionally intellectual property (IP) creation was not viewed as central to the financial services sector as some others, but that has changed significantly.

At a recent conference* intellectual property leaders at well-known financial institutions discussed developing intellectual property as a strategic imperative. Their discussion touches on creating a culture of innovation, educating inventors, setting up invention disclosure programs and rewarding invention in the era of Alice.

In full disclosure, one or more of the companies mentioned is a client of IPfolio and uses our IP management software.

Innovation culture & starting an invention program

For Visa a key threshold issue was determining what patent strategy would support the lines of business (LOB) — offensive, defensive or revenue generation. Encouraging invention disclosure had to work within that overarching framework.

Royal Bank of Canada (RBC) realized they needed to foster a culture of innovation and knowledge protection to create employee engagement or any invention disclosure process would flounder.  The invention culture starts day one during employee onboarding. Initially there was resistance, some stakeholders felt other priorities were more important than intellectual property.  It took time but now RBC talks about innovation and intellectual property as part of their brand, which allows them to attract talent. USAA’s new IP group also realized a few years back that they needed to foster culture of innovation with reward and recognition (R&R) programs.

As of five or six years ago, Mastercard was not filing many patent applications. A few technologists were motivated but most engineers were not submitting invention disclosures. But a new CEO directed the head of IP to make an innovation program happen and then they found a budget. Mastercard consulted widely with other companies about developing an innovation program.

TD Bank runs a lean IP operation and in the company there were proportionally few scientists and engineers as potential inventors. For their new invention reward program to develop their portfolio, TD also retained some sophisticated consultants to help them design the program rather than following a home grown route.

Education, reward and recognition

The speakers agreed that the balance between recognition as a reward for invention and financial rewards is always challenging.

TD Bank was advised that recognition of invention was generally better than financial reward. Initially TD went the other way toward financial reward, resulting in a high volume of weak invention submissions. Even if some were patentable often they were not aligned to TD’s business strategy.

When TD Bank switched emphasis to recognition they developed a stronger level of engagement from a smaller population who were true inventors. The most motivating recognition was the opportunity to share ideas with senior leaders in the LOBs. “True innovation is invention plus commercial application;” inventors wanted to see their idea recognized high up and then implemented.

USAA has a relatively new IP group and like RBC developed a multi-faceted program starting with new employee orientation.  They use an inventor portal for all employee’s submissions then an initial review by the IP group to see if an idea is viable, usually followed by a request for more work from the inventor.  At this point they may have to address Alice and adjust the focus from a business method to some technology attached to it. There are tiered money rewards at each stage including filing a patent. If the patent issues the inventor gets a prize and recognition from a listing on a prominent company-wide patent tree.

USAA located a generational issue with reward: younger employees wanted primarily recognition, older employees wanted money. Today, the reach of the program is broad and one of USAA’s most prolific inventors is a security guard.  They give innovation classes on a regular basis but avoid too much legal training. For example, they urge inventors not to act as attorneys and perform patent searches on their own. In contrast, Visa uses the smart phones patent wars as a more detailed training tool and find engineers really engage with the story.

Mastercard also concluded that focus on company wide recognition was vital, from inclusion on the public invention website to giving out awards at a CEO dinner. They found the kind of recognition that works varies culturally. So in one country money was such a motivator the result was a big spike in weaker invention submissions. Rewards were reduced and local committees established to review invention disclosures earlier. Mastercard also found that giving stock options “can cause people to give up their day jobs” so rewards can go too far.

The invention website has information about inventions, top inventors and patent applications as part of a multi-faceted recognition program that includes money.  Every employee can look into the portal and look up whatever inventions there are. Mastercard carries out varied educational efforts included events at eight offices around the world. The program has increased patent filings tenfold at Mastercard.

For Mastercard, like RBC, the issue is patent quality, relevance to the business and avoiding business method filings that collide with Alice. Visa pointed out though, you often don’t know what quality is for years, so quantity can be a good thing. There is value in `setting out traffic lights and seeing who drives through them.’

The belief at Visa is you can you recognize great ideas even if they are not patentable. They think of an innovation pyramid where some ideas at the highest pinnacle will become patentable, other ideas are not patentable but highly valuable to the bank. Consequently, Visa created two types of inventor rewards schemes accordingly.

USAA concurs and also has two separate reward programs. On the non-patentable innovation side, great ideas are uploaded into website accessible to all employees who can vote on which ones go forward.  This helps overcome inventor frustration when ideas do not go all the way to patent filing.

Harvesting & mining invention

Visa observed that financial services may not have a formal R&D process like other industries and instead ideas “just bubble up” and this may be inefficient.

Consequently, the focus today is toward ‘harvesting’ or `mining’ invention — much more proactive and complex than just creating an environment for invention disclosures.  Methods vary, RBC, for example, holds formal regular invention sessions with open office attorney hours for key groups who are doing innovative work.

For USAA, harvesting sessions now create most of what they file, not the inventor portal. The harvesting program uses seven separate tools, for example, problem statements.  USAA legal also engages with internal research and development teams dedicated to disruptive projects including ones LOBs have passed on to them. LOBs can also brainstorm with R&D to look at a particular business area. This can sometimes result in a broad concept requiring legal to follow up and help narrow it down to a useable idea.

Mastercard similarly offers challenges that pose a particular business problem and employees and employee teams submit solutions to win awards up to $150K.

Visa found a passive Recognition and Reward (R & R) program was not sufficient, their needed to be some push as well as pull. The fundamental building block at Visa is invention disclosures by LOBs and metrics around what is expected from each LOB. TD Bank finds its LOBs are now encouraged to compete against each other in innovation.  MasterCard tries to set goals and targets for LOBs but it can be challenging.  Organizing budget from each LOB for the innovation program is another area that needs careful handling.

According to Visa, cost control and accountability concerns are particularly acute at financial institutions, as one might expect. Cost per issued patent is by far the most vital metric and the prosecution budget is always under scrutiny by internal stakeholders. You need sound defensible arguments behind the program for the senior level finance people.

All identified the issue of paying for these programs and patent filings and that this is usually shared with LOBs. International patent filings in particular become expensive. However, TD Bank found LOBs actually become competitive with each other and even ask to give more money to the patent program.

Alice considerations in inventor programs

While some education about patent law is essential for their inventor community, a dilemma for all these companies is how deep to delve into the challenges around patents for business methods and Alice without deterring or confusing inventors.

TD Bank does standard patent law and section 101 training for LOBs. TD warns, however, that if employees learn too much law they can start being their own attorneys, edit themselves prematurely and not submit inventions.  MasterCard used to give a general Section 101 training widely, but now less so. Instead they give a more advanced training for technologists at innovation units around the world, like the MasterCard labs. RBC also does some minimal section 101 training just to targeted groups of likely innovators.

The speakers concurred that a central job of in-house IP Counsel is to translate invention into what is patentable.  Visa, tries to identify Alice problems early in the invention disclosure review stage and go back to inventors to try to resolve the challenges.

In the era of Alice the speakers agreed you generally need to add as much technology around or instead of the business method. Business processes are still patentable if you can integrate technological components in the inventions. Focus on technical improvements and put that in spec so you can cite it to the USPTO. To succeed, avoid broad claims and get inventors focused on developing and disclosing the four or five ways of doing something to help support independent claims.

If claiming technology improvements, it is key to have IT involved as well as product people because you need the right expertise and information to follow through to a patent application. On the other hand, while TD found technologists submit more inventions sometimes these can be incremental. General employees can be more adventurous, sometimes more business relevant and the results more valuable.

On the whole there needs to be a bigger, internal multi-stakeholder discussion now around invention disclosures because of Alice.

Regardless of the challenges, encouraging innovation and invention is vital to the business of modern financial institutions.


*13th Annual Patents for Financial Services Summit, New York.

Creating a Global Patent Strategy: Advice from Silicon Valley

We have an amazing and diverse customer base at IPfolio that ranges from Fortune 100s to dynamic technology startups in the Silicon Valley and the north island of New Zealand.

The vast majority have already established themselves across the globe or are certainly looking at markets beyond their home countries. Not surprisingly, creating a global patent strategy and evaluating foreign filing opportunities and options are part of the internal planning and budgeting activities inside many of their IP departments.


As foreign filing and patent protection is an expensive and resource-demanding process, we asked one of our customers for thoughts and tips on how he approaches foreign filing and prioritizes a finite IP budget. We agreed to cloak him or her in impenetrable anonymity.

Thank you for the time. Let’s start with the issue of timing: When do you go global? When is the right time?

Going global needs to be part of your discussion with the executive team. It must reflect and support your global business strategy and implementation roadmap, both in terms of geos and timeline. You need to tailor your foreign filing strategy to business goals to ensure freedom to operate, while maximizing return on investment.


Where do you specifically start? Start with why. Is there a business need? Ultimately, IP helps secure and ensure your company’s key financials. Freedom to operate connects to revenue, net income and profit. Where these metrics are dependant on specific countries or markets, what IP assets do you need to secure to protect them?

In my case, my company sells hardware components basically everywhere on the planet. My rule of thumb is if a particular product line in a given country doesn’t generate at least 3-to-5 million dollars in revenue, it’s probably not worth patenting in that country.


Are you considering cost when making this decision?

Not exactly, but in my experience the basic cost to get a simple patent family filed across five countries is probably about $150,000 over the 20-year life of the patents. This is a general estimate based on a very efficient prosecution practice, and a lot of money, particularly for young companies.


Although we all know that complex patents can cost substantially more than this number, I’m assuming prosecution without doing any appeals or anything like that.


What’s the sales strategy to pitch executives?

There are really two approaches to developing creating a global patent strategy and selling it:


The No-Plan or Faith-Based Approach is a very short, usually overly-enthusiastic exercise in guesswork. It may or may not work out, but “hey, this is going to be a great country, we should file in China now” isn’t a great foundation on which to build a successful career in IP.


The Strategic Plan is really the only way you’re going to tilt the odds in your favor. If you go ask for a foreign patent budget – particularly if you are a small and growing company – you won’t have infinite resources. Where do you spend your limited money? How do you get more money?


Create a good strategic plan built on a financial foundation and model that the CFO can understand. Start with the business unit, look at the cost benefit for the patents, and map how everything leads to enhancing the value of your business assets and your recurring net income.


Do you distinguish between offensive and defensive patents?

Absolutely. You can go global for defensive reasons. Let’s say that you need to secure manufacturing rights in a country. While you may not be selling in Taiwan, you may be contracting out manufacturing with someone there. If so, you better think about whether you have the protection needed to keep manufacturing in Taiwan. Where do you see your product or service revenue going in the future? This is an important evaluation of market evolution. Are there areas where you are likely to have IP wars in the future?


You can also go global as an attack strategy. For example, being strategic about licensing can be massively beneficial. Cross-jurisdictional arbitrage is a sophisticated strategy that I have used in the past and continue to use whenever possible. It starts by considering “where am I going to need to defensively cross-license or if I am in that mode to monetize?”


Can you give us a real world example of the kind of thinking needed?

Let’s begin with IP in China: In China, there are two kinds of patents, invention and design.


Design patents can only be hardware, you can get them in about six months, no damages and they can only be enforced for an injunction. There is only an examination of basic patentability and it’s not a complete exam. It’s kind of a half-patent, if you will, but you can get one in six months and get an injunction.  


Here’s a specific real-life example. It began with company A facing an assertion from company B. Company A had no patents they could use to fight back with so A filed a design patent in China. Company A really didn’t have any relevant business in China with this technology, but knew  company Bdid all their product line manufacturing there.


As soon as A got the patent, A went back to B and said ‘let’s talk about that a cross-license in the United States. If you want to keep manufacturing your other product in China, we need to reach an agreement.” The alternative for them was that A could have secured an injunction in China within six months.


Why did A file for a patent that wasn’t central to their core product lines? Because A needed a tool against company B that also had a similar business that they were making in China. It was just a way to arbitrage across borders to secure a reasonable global settlement.


Another reason, of course, to use such a strategy is licensing for money. Good luck getting a license if you have two or three weak patents in the United States. You can’t leverage weak patents in the United States to secure and enforce injunctions, and your ability to extract a license becomes substantially reduced as a result. However, if you have a nice German patent and your target company has business in Germany, then you have something to consider licensing in that family on a global basis.


In terms of licensing, this is very strategic, very big picture thinking and execution yes?

It really is. If you are going to do licensing, it is becoming vital to think about when creating a global strategy and who your likely competitors are. It’s only half of the battle, though. After you have identified where you might want to think about patenting, what are you going to patent? How much is it going to cost you? What’s the cost-benefit of doing it? These questions form the second half of the equation.


What’s the potential value of getting a patent? Even if you think “China is a place where we might want to be for some reason, or Germany is a place we might want to be,” can you get a patent that you can enforce there? If you do, what can you enforce it for? If you can only enforce it for injunction, and you are in the business of making licensing revenue, it’s not going to matter. In fact, if you are not in the business of making license revenue, but protecting your freedom to operate, injunction might be a good thing for you. How much does it cost? is it really worth the effort


Arriving at these answers, assessing foreign patent systems, and doing it in a way that you can sell it to your CFO and get money can be very hard


Any recommended methods to convince the CFO?

Something I’ve done in the past is to build detailed overviews by creating matrices of each country of interest that I identified. For each country, I create a color-coded matrix. I assess government policies and practices, and try to assess the patent office expertise, speed and transparency. I also try to assess whether the country patent bar has sufficient experience implying that we can actually get it done. Finally, I include costs and enforceability.


By doing this extensive research, I aggregate information and data that help me understand whether I can get a patent and enforce it, whether the enforcement actions will mean something and whether I can even afford to invest in a remedy. What are the current available remedies? What may change in five years when I actually have that patent in Germany, China or another country. Will I need it in a decade? Will my business even be there anymore?


What do you say to those that say it sounds speculative?

I understand. Some people reading this are probably saying “yikes, how in the world can I do all this work?” While nobody is an expert, I have found two companies that create reports that help me paint the big picture picture. I use them to fill in details for the people I need to convince. For me, they are helpful to answer questions from my boss such as “Why are we wasting time filing patents in China?’ I use the data to discuss where China is today, and where experts and market research suggest it will be 5 and 10 years in specific areas.


When you have third-party information and research, you can say “Don’t take my word for it; here is data from experts based on market surveys and extensive local research. Let’s talk about the value of the patents we might have, their enforceability and where the Chinese patent system is going.”


It’s an imperfect methodology but it’s a way to look at the cost-benefit of going global. I really encourage IP professionals thinking about creating a global patenting strategy, and the intricacies of budgeting to access market reports as part of their tactical planning.  


Thank you so much for your time and some fascinating wisdom on avoiding mistakes when creating a global patent strategy.

Everyone should understand that there is no infallibility in IP. Hindsight and looking backward will inevitably throw light on decisions that proved wrong. Although 100% success is 100% unlikely, extensive research and methodical planning will increase your odds.