Customer Spotlight: Managing a Lean IP Department at Deutsche Post DHL Group

Deutsche Post DHL Group is the world’s leading mail and logistics services Group, with annual revenues above USD65B, and 470,000 employees in 220 countries and territories.

Björn Ulmer has lead* the IP/patent team as Director / Head of Corporate Patent Management over the past 3 years. Ulmer has an atypical background for an IP professional; He is an economist by background and arrived at Deutsche Post DHL from The Boston Consulting Group (BCG) with an extensive business strategy resume. Approached to lead the Corporate Patent Management (CPM) team, he found the world of patents and IP fascinating and irresistible.

bjoern ulmer

Björn Ulmer, Former Director & Head of Corporate Patent Management at Deutsche Post DHL Group *

We spoke with Björn at the Global Patent Congress in Copenhagen about his experience revamping Deutsche Post DHL Group’s patent program, including the process of evaluating and implementing IPfolio.

What did you discover when you took over the Patent Management in 2012?

The patent program here had started in the early 2000s. My first project in 2012 was to develop and implement a new corporate patent strategy directly linked with our business strategy. As you would expect, the early months were filled with research and stakeholder meetings, many with Business Unit leaders and external peers. They clearly understood the need to prevent others from copying our innovations e.g. in automation and last mile delivery, and were enthusiastic about collaborating with us. Although they wanted us to manage everything, they also wanted to be able to look more actively into our portfolio and contribute their perspective.


Who do you work with?

I’m the head of the Corporate Patent Management (CPM). There are a handful of Patent Consultants inside a massive organization of almost 475,000. We have a little bit of a matrix structure, with key account leads for the group’s Divisions, and functional responsibilities like commercialization, licensing, analytics or inventor remuneration assigned to individuals within my team.


Do you draft and prosecute in-house at all?

No. Our technological fields are too broad, and our filing numbers aren’t big enough yet to justify building in-house expertise. So we outsource this part of the work to external counsels.


How many of your team are patent lawyers, then?

None of us are. We discovered that creating an impartial channel between inventors, patent lawyers, and product owners reduces potential interest conflicts. We work as internal Patent Consultants as the driver and bridge between everyone. This independence ensures objectivity when determining issues such as whether something is patentable, and if so, deciding if it is worth doing.


Can you tell us anything about your filing strategy?

Very broadly speaking, the decision-making process is focused on, and aligned with, our long-term corporate strategy. We have moved away from the “bottom-up” and more quantitative approach, to a “top-down” quality driven strategy, where we identify areas of strategic importance with the business owners and then actively scout and mine for patentable ideas related to those strategic areas.


What was the catalyst as far as choosing IPfolio?

When CPM was set up in the early 2000s, we implemented a traditional docketing system. But this was oversized for our organization and too complex for our internal patent consultants, as they just needed a small part of it. Therefore it was replaced by a highly customized system built on an Access database. Very efficient to our previous needs, but expensive to maintain and especially to update with new features.


At that point, it was 2013, I said, “We need something new. We need a modern standard tool. A small department like ours can not be that different, so we don’t need a custom-developed solution.” In the end it turned out that we are indeed a bit different.


We are different because we are a very big, global company with a relatively small and lean patent team. Look at the market for IP management solutions, and you will see that most of the systems are either designed for big companies with big patent portfolios and budgets, or for small companies with small portfolios. The “big” tools are oversized for us, and the “small” tools often lack the flexibility to deal with a complex corporate structure and decision-making processes like ours.


How did you research IP management solutions?

We really analyzed, I would say, most available tools on the market. We started first in Germany, then looked beyond. In the end, we identified and chose IPfolio.


Ultimately, we settled on IPfolio because it allowed us the flexibility that we needed, and it could be implemented and migrated very quickly. It was a win-win situation, where IT said “It’s great if you can get such a tool up and running so quickly, and we can reduce our efforts.”


In the spirit of the “lean” IP department, the software implementation was very lean as well. It was very cost-effective and needed few resources.


What are the results so far? What has changed since the roll-out?

IPfolio was easy to roll out, and I can produce reliable management reports, with the click of a button.


Global access means that our IP liaisons in the business units now have instant access to the patent portfolio, and inventors from all over the world can send their ideas to us for review.


Administration overhead has dropped. IPfolio is a very cost-effective system and delivers a steady flow of innovations to its standard product compared to our own development.


Other benefits we’ve already seen are improved internal processes and a better understanding of decision criteria and budget.


Overall, IPfolio is a very convenient way to manage a portfolio at a strategic level.


Thank you for your time Björn, and all the best for the future!


* Since this interview was conducted, Björn has left Deutsche Post DHL Group. He is now Managing Director at PatentSight GmbH, a provider of strategic patent portfolio analytics and consulting services.

Silicon Valley GCs focus on IP Management & Strategy

At the recent 27th Annual All Hands Meeting organized by the Silicon Valley Association of General Counsel (SVAGC), intellectual property matters were forefront, and particularly IP strategy, litigation and portfolio management.

Over three hundred counsel and representatives of the dynamic Silicon Valley technology community attended the conference, which also addressed pressing corporate regulatory, ecommerce, privacy, data transfer and data security issues.

The IP portfolio management strategy session was particularly well attended. Presenters recommended an analytic and holistic approach to the portfolio, which can then drive a related patent prosecution strategy.

The presentation began by using a matrix to assess the portfolio to determine a patent strategy. One dimension is business value: is the asset defensive, offensive, aimed at partnerships, driving portfolio growth, or filling portfolio gaps. Cross reference that to second axis of the level of technical advancement: is it revolutionary, evolutionary, an upgrade of older technology, an entire system or component of a system and how does it compare to key competitors’ portfolios.


Assets can be evaluated and ranked against this matrix. Strategic considerations include how you will use the patent, where and when do you need protection (timing) and which internal stakeholders need to be part of discussion. Vital is an analysis of the competitors products and IP. From this a visual map can be a powerful tool for determining strategy.

A freedom to operate (FTO) analysis involves identifying and analyzing the patents of others that may subject your company to patent-infringement liability.  Complex multi jurisdiction analysis and mapping is necessary, for which you need a clear picture of the portfolio, product families and status of IP rights. Given there are no unlimited resources, it is vital to focus on primary competitors and patent features without which the company cannot survive.


Fundamental to IP portfolio management is “filling gaps” in the range, the speakers used a visual to show the present product and IP portfolio. There are two dimensions, first can you fill the portfolio gaps internally by product development? The rate of internal innovation, the level of engineering expertise in specific fields, the bandwidth of engineering team, budget and timing should all be evaluated.

Second, should you fill the portfolio gaps via external sources? This might include patent acquisition, company acquisition, or acquiring exclusive licenses. Sometimes overlooked, the company must pare the existing portfolio to focus efforts and manage costs. Many inventions are overtaken and substitute products appear that eliminate the original business case.


The objective is to “right size” the portfolio to determine how many patents are enough. Bearing in mind what’s achievable, the rate of technological evolution in the field, the number and type competitors, types of patent needed and strengths of patents. IP budgets are never unlimited, so business and technical leaders must constantly evaluate risks and prioritize.  This requires evaluating risks of reducing areas of focus and the number of patents and number of foreign filings.

Additionally, portfolio management and patent litigation strategy must build in flexibility to be agile in face of constant changes in the law, funding, the market and technology evolution.

Overall, intelligent portfolio management must answer the question “why are we making these investments?” Portfolio management must reflect and to some degree influence business goals. The portfolio should allow intelligent resource management. In the end, the company’s business and technical leaders must understand the current portfolio, strategy, and commitments.

All of the above requires a robust tool portfolio management tools that allows you to track assets, report, schedule, visualize and budget.

All illustrations are from the presentation materials, with friendly permission from of Kevin McLintock at Logitech and Craig Largent at Kilpatrick Townsend.

Customer Spotlight: How We Use IPfolio at Logitech

How does a company synonymous with a market that has peaked continue to grow? Identify emerging opportunities or create new categories, of course. An R&D program to create inventions and an IP program to protect them are requirements.


One of Logitech’s current hot sellers: the Duo-To-Go iPad case and keyboard (image source: Logitech website)

Kevin McLintock joined Logitech in May 2011 as Director of Worldwide IP to ensure it would continue to thrive, despite the decline in the computer mice and keyboard categories. A year later, his group became IPfolio’s very first customer.

On last week’s blog, Kevin discussed how he developed an IP strategy and program to support Logitech’s operations in emerging categories such as portable music, video gaming and video conferencing. In Part Two, he discusses how he uses IPfolio to execute the strategy.

Last week, you described the long process of reaching consensus and finalizing an IP strategy. How did this translate into execution in the early days?

One of the first things we did was to consolidate individual patent budgets from multiple business groups into one master budget. We created priorities across the entire company and started evaluating inventions and disclosures, and ideas against overall strategic value and priorities. Filing decisions were the result of the big picture rather than narrow business group-specific decisions.


What’s the current composition of Logitech’s IP department?

Until now, I’ve handled IP strategy and patent prosecution while a colleague has focussed on litigation. We’re adding two new attorneys to expand our capabilities in all three.


Before talking technology, how do you ensure that IP is visible in the company?

I travel a lot. We have a big R&D center in Switzerland that does R&D for probably half of our product lines. I visit every quarter to meet with the team there. My European trips also include a visit to our R&D center in Cork, Ireland. Our music group’s engineering team is in Portland. I visit them quarterly, as well. We have some manufacturing teams in Asia. I usually coordinate with them remotely because most of the manufacturing leadership is either in Newark, CA or visits often enough.


What’s the backstory before you became one of IPfolio’s first customers in late-2011?

We do all of our drafting outside. In 2011, we didn’t have any tools for directly managing document flow with outside attorneys. We had tried to develop an in-house tool to help with tracking but it was incredibly labor intensive. There was way too much copy and pasting, and I was reliant on having budget for a paralegal team to do it.


Did you create a needs analysis or project spec?

We needed process automation, visibility into the process, and access to the information inside it. The wish list was a tool that would allow us to be – in a very hands-off perspective – able to quickly display our portfolio status, understand its content, and collaborate with outside counsel on every issue we needed to.


Anything else?

We had other expectations, as well. Getting consensus and buy-in from people throughout an organization is a key element to raising the visibility and importance of IP. High on the list was the ability to create visuals and reports on our portfolio status, trends, and progress, then share them with my non-IP colleagues in the legal group, and business groups and teams. We also wanted to incentivize and recognize innovation. I wanted to formalize and manage our Inventor Awards program, and knew the right tool would be very helpful in automating it.


Have you been able to automate your IP system as you just described?

IPfolio has been exactly what I hoped it would be. I don’t need more features right now; everything that I wanted IPfolio to be able to do, it delivers. It gives me instant access to all our patent matters, wherever I am. I have dashboards for high-level overview, and by pulling up a single record, I can see the full file history and understand what has been happening at the detail level.


There are some areas where we’re not as far along as I would like. Some elements of our Inventors Awards program, for example, still need tweaking. What we do right now is to create tags and categories that serve as flags to indicate the payment status of each application. The additional changes we’d like to make are more of an implementation issue on our end, than missing functionality.


How does IPfolio fit into your day-to-day activities?

For most of 2014, I had someone in Switzerland helping me with European patent activities. We used IPfolio to collaborate on document matters. It was a very efficient way to collaborate with her. Currently, I’m the only user. I receive a huge amount of email every day, hundreds of messages from inside and outside the company. Many of them are outside counsel updates on office actions or similar activities.


IPfolio has some very helpful routing features to automatically update records. I can create a new record associated with a unique ID. Whenever our outside law firms (or anyone else) wants to update the record, they add the ID to the email subject line. This automation works flawlessly unless there are typos in the subject line or someone sends emails into the system before I’ve created a record. Getting it right is a bit of an adjustment for some law firms, but they generally do after a short while, and as a result I have current records without ever having to worry about filing documents that I receive into the right place.


Overall, where do you find value in IPfolio?

Logitech is a $2 Billion dollar company. Our patent prosecution and IP strategy team is very small so anything that saves time and improves outcomes is valuable. IPfolio has done that. It’s delivered a lot of benefit to us; from visibility and transparency, to process and task automation.

Many thanks to Kevin for spending the time with us. If it wasn’t abundantly clear, he’s a really busy guy. When he’s not managing IP, he manages three young children with his spouse. He’s not sure which is more challenging.

IP Strategy Q&A: How We Developed Our IP Program at Logitech

If your IP career trajectory includes a future as in-house counsel, you’ll have opportunities to join companies with organized programs, and ground-floor opportunities to formalize a program. Kevin McLintock signed up for the latter when he joined Logitech in May 2011 as Director of Worldwide IP.

If you used a desktop computer after 1990, you’ve probably touched a Logitech product. Founded in the early 1980s in southwestern Switzerland, Logitech became one of the world’s top computer peripheral brands as desktop computing and mice and keyboards invaded businesses and homes. By December 2008, it had manufactured over one billion mice.

The explosion of mobile computing, however, requires fewer mice and keyboards so Logitech has branched out. Kevin’s mandate since arriving has been to align IP strategy and program execution to support expansion into emerging categories such as wireless music speakers, videoconferencing and video game controllers. We sat down with him to discuss his role in the company.

Kevin McLintock Logitech

Kevin McLintock, Logitech’s Director of Worldwide Patent and IP Strategy

What was it like when you first arrived?

Logitech’s revenues the year before I joined were very close to $2 Billion. Despite the company’s size and history of product innovation, there was no collective IP strategy. I knew this, of course. Building a formal program from the ground up was a big part of what interested me as an IP professional. Logitech was almost a greenfield opportunity.


What was Logitech’s IP history up till then?

We’d been filing patents for 20 plus years in a very ad hoc way. Each business group was independently responsible for deciding what they filed their patents on. Their budgets were based on their contribution to total companywide revenue. Mice and keyboards made most of the money for the company so mice and and keyboards got the biggest chunk of money to spend on patents.


The business groups could figure out, and did figure out on their own, what to file for, but they were just protecting products that we were creating and releasing. Back then, we had an attorney, not a patent attorney, but a corporate attorney who helped guide Logitech’s patent filings. She tried to do some strategic work but there was always partition across the business groups. There was no cohesive strategy for the company. Engineers could just call the outside counsel and say, “Let’s file a patent on this because it is new and interesting.” The outside counsel would then draft the application and continue to file until the budget ran out.


My arrival was the first time in the company’s history that they had an experienced patent professional focussed on creating an IP strategy.


How did you start the process?

The foundation of any IP program is an IP strategy. Before you figure out the how and what, you need to agree on the why. The purpose of IP for us at Logitech is really freedom to operate. It is our primary goal right now. Freedom to operate applies to current products and forward-looking opportunities. It’s a balance of protecting our current revenue sources and where we foresee as future opportunities.


You need to file patents that will allow you to operate in both. They may be on products that you would make, patents based on competitive products, and patents to pursue cross-licensing opportunities.


Finally, you need to consider developing a portfolio for defensive flexibility if someone else takes issue with your products. A strong portfolio is a massive asset if you have to negotiate your way out of it.


What did you do first? I assume it was a group effort, with input from strategic planning, sales, R&D and engineering?

Yes. Our first priority was securing agreement and buy-in across the entire company. What should our priorities be? We can’t possibly file on every idea from every group because something is important for a small category or product. You have to look more globally when prioritizing. We did this by using a four-step process:


1. Current Products and Markets

We needed to protect current operations. This meant filing patents, utility applications on the basics of what we’re doing, design patents covering specific products, and foreign patents for manufacturing and geographic markets. We also filed to ensure we had the right number in each category.


2. Forward-Looking Opportunities

We had to protect forward-looking areas. What did we think we were going to be doing in 3-5 years? We analyzed potential future markets and the seed IP we might need to expand into them.


3. Future Markets Where We May Not be Active

Another important step is to think about future markets from the perspective of simple R&D. Are there inventions we could patent now that we might not develop into products? Could they be interesting and attractive to competitors in the future?


4. Future Enforcement

In every prospective future product area, you have to think offense and defense. What could we do to maximize our future options to take action against someone else or be able to defend if someone takes action against us? This often means determining the right number of patents.


How important is consensus when finalizing strategy?

Implementing an IP strategy is so much easier if everyone is on board. Consensus when finalizing your IP strategy ensures a less contentious future. When our business group leaders agreed on what was important and strategically significant, they understood that we’d prioritize future decisions based on this strategy. People could then understand, for example, that perhaps we wouldn’t file any patents from the video business group, for the next six months, because we were prioritising other ideas from other groups based on the filing priority that everyone had agreed to.


One more comment about strategy. Know that you will have to update it. Any mobile phone IP strategy written in 2006, for example, would have been woefully out-of-date by 2009 following the introduction of iPhone. The iPhone arrived in 2007. It was an instant success. Many assumptions that seemed so perfectly logical in 2006 proved to be completely wrong.


What were some of the changes that you felt were critically important for Logitech?

Our portfolio was very dense, covering very product-specific implementations. We needed to transition away from that approach. To do it, we needed everyone to understand the importance of creating more meaningful IP. We started shifting our filing strategy from filing to protect specific products to covering more fundamental platforms and more forward-looking ideas. This is, of course, what everyone expects from IP, but it’s often hard to implement if you don’t have the big picture.

1980s Logitech Mouse

An early Logitech mouse from the 1980s

Next week, we’ll talk to Kevin about how Logitech’s IP strategy guides tactical execution and how he uses IPfolio to manage his portfolio.

Why It’s Time for Legal to Embrace the Cloud – Part II

Two weeks ago, in Part I of this post, we covered some Cloud Computing 101 and started to discuss how switching to the cloud increases business agility and cost efficiency, thus creating positive ROI. We also busted some popular myths about data security and availability in the Cloud. Now, let’s dive a bit deeper into the benefits, specifically for corporate IP/Legal departments.

Benefits of the Cloud

Generally, the only logical reason to move forward with one technology over another is because the pros outweigh the cons, and you’re realistically confident the implementation will generate a positive ROI. Plenty of cloud deployments have delivered just this in recent years as the switch to SaaS has created overall process efficiencies by enabling businesses to embrace a “better, faster and cheaper” reality.

You don’t have to search far to find a calculator or methodology to model the numbers generated by this reality. Whether you need a simple or complex model to convince the decision makers, the benefits of the cloud have been increasingly apparent in years. Here are some of the benefits that should convince even the most sceptical CFO, CIO or CEO:

Total Cost of Ownership

Even using a back-of-the-envelope method, the Total Cost of Ownership (TOC) calculation will fall in the cloud’s favor vs. on-premise. Avoiding hardware and software license costs and overhead related to internal IT administration alone will usually aggregate into clear TOC benefits over traditional software implementations, even before you start quantifying the efficiencies that will lead to doing more with less internally as well as reduce your bills with outside counsel.


Anytime, anywhere access to real-time information is one of the productivity boosts that the cloud delivers. As long as you can connect information to the Internet, you should be able to realize important productivity savings. You can be anywhere, the information can be anywhere, and those with whom you need to share the information can be anywhere. You don’t need to worry about network access or VPN configuration. Log on, log in and start working.

This is especially valuable as the world’s workforce becomes more mobile and less centralized. Tens of millions telecommute whole or in part every week. Millions of organizations use contractors. Telecommuting and external contracting are two areas that are much more viable and effective due to cloud options.

Streamlined Processes

Process improvement can be a huge benefit, one large enough to alone justify the selection and implementation of a cloud-based system. With an increasingly globalized workforce, facilitating effective communication and collaboration across a large organization with multiple sites around the globe is much easier than in the pre-cloud world.


Companies migrating to the cloud typically experience a much shorter time-to-value. This means that they begin to see and quantify material returns and benefits very quickly once they go live.

What Happens to an IP Organization that Leverages the Cloud?

While the Cloud isn’t the cure-all for everything ailing a company, it certainly delivers myriad benefits as outlined above. There is a growing body of evidence, a.k.a. real-world examples, of how legal departments in large and small organizations are doing more with less after opting for the Cloud and selecting a SaaS offering to manage their IP-related information and activities.

Here are a few examples of what companies using IPfolio have been able to do:

1. Improving Strategic Visibility

At a high level, the Cloud has enabled companies to connect IP assets (such as patents, brands, trademarks, and copyrights) to products, geographies, markets, and revenue streams. Having visibility into the entire IP portfolio enables strategic decision-making to keep the IP portfolio aligned with the development of your company’s products and markets.

2. Data that You Can Trust, at Your Fingertips

Say adieu to spreadsheets with dozens of tabs and worksheets. Start enjoying data integrity that will allow you to efficiently produce reports for management, administer your inventor awards program, and keep track of prosecution milestones and costs, as well as all related documents.

This is particularly important in fast-moving industries, where employees involved in the decision about filing a patent are not unlikely to move on to their next gig before the patent even issues. When deciding about a renewal, many years after the patent was filed, it can be invaluable to have proper documentation at hand about all the factors involved in earlier decisions.

3. Managing Access for External Parties

A SaaS tool like IPfolio makes collaboration with external patent attorneys and fellow employees in distant locales as simple as providing and managing access to the information they need. Everyone gets the right level of access to online IP records, which are immediately updated with changes viewable by everyone. You can instantly enable or disable permissions for specific groups of users. You have control. They have access.

4. Tracking Ideas From Invention to Outcome

With a cloud-based Inventor Portal and Review Board, it is easy to track and monitor the evolution of an IP asset from the invention stage through to the issued patent, as well as the commercial product(s) the patent protects, and keep the inventors engaged all along the process.

Are You Ready for Your Test Drive?

The Cloud has arrived. Legal departments shouldn’t let their finance, sales, marketing, HR and operations peers reap all the benefits. The same data access, accountability, pain point relief, and efficiency gains that make it so much easier to focus on what matters most are well within reach of the legal org chart.

We have to ask, of course. If you’d like to see what the Cloud and IPfolio could do for your IP portfolio, why not take it for a spin.

Your test drive keys await. Contact us to pick them up.