Interviews, Uncategorized

Wayne Sobon on Treating IP as a Business Asset in a Small/Medium-Size Enterprise.


 What are the challenges you face in day-to-day IP management?

If you’re the chief IP counsel of a company you have your portfolio of assets, and you’re growing those, and you’re working internally with your engineering team, with your marketing team and you’re developing those assets frequently working with outside counsel, but your management is looking at you and saying, “OK we’ve given you a certain amount of budget, or you’ve actually asked for more, what are you delivering to us for the money that you are expending?” For that you need to actually step back a bit and be able to visualize, explain, and assemble your data as an overall coherent set of portfolios that you are working for, for particular purposes, for given product lines or given a market segment, and being able to explain where you are right now, where you’ve been, and where you’re growing and better able to visualize and demonstrate the ROI of that business investment. Just like any other business asset.

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How are IP Management needs different in-house versus in a law firm?

In the law firm setting, you’re mostly managing docketing and dates and making sure that you don’t miss anything, and making sure that the workflow is keeping up with what needs to happen with the management of each asset. In the corporate environment, depending on the corporation, that can be a key driver, especially for corporations that have their own in house patent or trademark prosecutors who are managing directly those assets. But frequently in smaller settings or even larger corporate settings, what really is the focus is managing the asset. It’s not managing to legal dates or managing the workflow – although that can be an important part of it. It really is more understanding what you have as a business asset. Being able to accumulate that, understand it, digest it, and then communicate that effectively to leadership, to the board and to external people in an effective way. So it’s more systems and technology that help you manage your overall portfolio, as a portfolio, rather than necessarily just managing your docketing and dates.

What advantages does ClearAccessIP bring to in house counsel?

In most companies you have resource constraints of how much you’re allocated to spend, how many employees to hire, how big the team is, and you really want them working on the highest level, highest value work. In a lot of other IP management systems there is this requirement of having manual input, manual management and checking dates and to know where the status of various assets are. What I really like about ClearAccessIP is the focus on automating so much of that. So that if you take that out of the equation you’re then freeing up your team members to focus on much higher value work. So the basic plumbing, the sort of guts of the system, the management of the of the data is almost autonomous and doesn’t require continuous upkeep. That is being pulled down from from the available online sources, checked by the AI system and the machine learning system inside of ClearAccessIP and that to me is a real advantage because then it frees up my team to do much more important work. Namely taking those assets, understanding them, tracking them, making sure we’re managing outside counsel, making sure we have a check on what they are doing and that we have at our fingertips all the information we need without a lot of other input.

Just to give you an idea of a daily workflow: outside counsel sends you a latest draft of an office response to an examiner of a patent to say that they are rejecting it for various reasons. Without outside counsel spending all the time and effort to pull together all the backup information of what was filed, the claims that are pending of all of the different office actions and give that to you. ClearAccessIP has already downloaded all of that from from the available sources – from the patent office – you have it at your fingertips. During a conversation you immediately have and can call it up and go to any one of those documents and look at it and be able to respond in real time to outside counsel. It saves the money of the outside counsel or their paralegals assembling all that information for you at any moment. That to me is a huge advantage. The other thing is that, without having a lot of paralegal overhead, you’re having all your basic docketing happening for you, internal to the system. So even if you’re not needing to do that because you’re not filing the actual documents, it gives you a useful check against what the outside counsel is doing to know in advance what’s going to be coming up in the next month, two months, three months, in terms of due dates, being able to make sure that they’re managing to those due dates. So it gives you an independent, verifiable check on what your outside counsel is doing. I find that very valuable.

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In addition to your prosecution experience, you are also a licensing expert. How does ClearAccessIP streamline the licensing process?

Most of the ways that portfolios are shopped around and licensed are pretty static. The ways people deal with this kind of issue is in a very static way that is labor intensive, usually always incorrect the minute it’s done, and burdensome. There’s so many different contexts where you need to provide somebody else with information about what your portfolio or sub portfolio is. Typically what you do is you have a paralegal or someone in your team and you say, “Assemble the current set of data for that set of IP that may be going to the outside counsel and saying, “Can you give me a spreadsheet download from your docket system – what’s our current set of patents?” Maybe you do that internally and you assemble a spreadsheet. You put it up on Dropbox or one of the other available sharing platforms – Google Docs – and then the other party can then look at that list and check it. They might say we need more information than that, we actually need the file histories. So then you have to go and download the documents, and put them together – all the documents that relate to each of those patents. Assemble all that. Put that in a package. Upload it. Then it’s made available. Every time you do that, it’s true for that moment in time… maybe. Even then you’ve made mistakes – People haven’t downloaded all the documents. Some documents are mislabeled or put to the wrong files. It’s in a confusing order. So I’ve never seen a very good, elegant way of doing this until I saw the deal room system at ClearAccessIP, which automates all of that and makes it always correct.

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Where does ClearAccessIP’s licensing support come into play for small companies?

[As an in-house counsel], you’re really resource constrained about your ability to pay someone to do this or have somebody on your team do this and you don’t have the time to do it. So, having something where within seconds you can create a set of your assets and be able to share those reliably with your outside investors or third parties is really valuable. Add on top of that the ability to do some additional visualization on those assets – that’s also really really important. I view that as one of the key competitive strengths of ClearAccessIP. I would add, another another area where this comes into play is – outside the licensing transactions and outside the financing transactions – is increasingly companies small to large are looking to acquire assets to help bolster their portfolio. They might do some organic growth and development of them from their engineering and their marketing staff, but they also will be focusing on inorganic growth – of acquiring assets – and there again, when you look at a given portfolio you might want to acquire, It’s very easy to create a DealRoom with those lists of assets, and then all parts of the team; the business, the legal, the finance, will all be looking at the same set of concurrent data in a way that is reliable when they’re looking at potential acquisitions. So that’s another area where having this kind of effortless DealRoom really helps a lot.


*Wayne Sobon is the Vice President of Intellectual Property at Juul Labs. He has over 30 years of technology, business, and legal experience across a range of corporate and client settings – from startups to Fortune 500 global companies.

Some of his career accomplishments include: launching Accenture’s Global Intellectual Property Department and growing that team to 17 professionals in the U.S. and Europe with around 5500 patent and trademark assets under management. He was the vice president, chief intellectual property counsel at Rambus, where he managed Rambus’ 2800 patents assets, and as part of that acquired Cryptographic Research Inc.’s portfolio – a transaction valued at 350 million dollars. He was also founder of Inventergy Global Inc., an IP licensing startup which he took public in 2014.

Wayne holds several accolades from distinguished positions in the intellectual property community. Among these, he served on the board of directors, the executive committee, and was elected president of the AIPLA. He has also been named one of the top 300 intellectual property strategists in the world for the third year in a row by Intellectual Asset Management Magazine.

 (condensed from interview with ClearAccessIP on March 6, 2018)

**Wayne Sobon is an advisor to ClearAccessIP

***This interview has been lightly edited for content and clarity.