Author: Jeff McKinney

For World IP Day 2023, which has a focus on women and IP, we celebrate some of the women at Marconi, who are working in careers accelerating innovation and creativity in IP. In this article, Bing Zhao, our Asia Communications Manager, profiles three of her colleagues from around the globe.

The world of intellectual (IP) exists at the intersection of two traditionally male-dominated areas: law and STEM (science, technology, engineering and math). While education and practices in the two spheres may have their own challenges, individual organizations which operate in the IP sector certainly have the power and responsibility to create an inclusive and welcoming environment for women in IP.

As a leader in creating solutions to simplify patent licensing and facilitate technology sharing, Marconi has built a global team, spanning time zones and cultures, to be close to our customers both in diversity and geographically.

Marconi women across three continents have contributed tremendously to our success, with their unique and valuable perspectives. We’d like to introduce you to three of them and let them share their stories of working in IP.

Marianne Frydenlund
Oslo, Norway

Marianne has been interested in pursuing an interdisciplinary career combining technology and law since she graduated from law school. Her first encounter with intellectual property was observing a supplier in the oil industry who customized a generic product to fit their client’s specific requirements, which led to inventing new solutions that could be patented.

Her involvement in IP deepened during her tenure as Senior Vice President, Legal and Compliance at a Norwegian chipset and module manufacturer. She saw that there was controversy around indemnification in the supply chain, together with challenges in addressing the subject in distribution agreements. She spent a year renegotiating the company’s distribution agreements, which began a journey of SEP education with potential customers. This created opportunities for the company to collaborate creatively with patent owners, setting it apart from many other module manufacturers.

During those years, Marianne spoke with numerous IoT implementers of all sizes, concluding that the IoT industry would benefit tremendously from simple and efficient joint patent licensing solutions provided by independent platforms. That realization led her to join Avanci, where she is currently leading and developing innovative licensing solutions for IoT beyond automotive.

“Making industry led solutions is not a walk in the park, it is more like an ultra-run!” For our programs to work, we need to listen, contemplate, and understand considerations and priorities from both sides in order to find a solution representing a compromise to be endorsed by industries. “The size of these puzzles we are trying to piece together is perhaps what makes it feel even better when we succeed. Being inspired and encouraged by how my colleagues have found a successful solution for the automotive industry through the Avanci Vehicle platform, I am very optimistic for my IoT programs.”

Besides finding an industry solution, Marianne is also very passionate about mentorship for women, saying “as women, we should support and lift each other up.” This is exemplified by her deep involvement in the Norwegian community, mentoring young girls to explore technology and advance in IP and legal careers. “I feel grateful to have a great female manager who guides and supports me. We need to be good role models for other females in the company and in the industry.”

Marianne believes that challenge is key in cultivating strength and happiness. “Human beings are generally happier if they have problems to solve. Overcoming challenges and solving problems offers a sense of joy.” If challenges are being disregarded or removed, we would not feel happier, most likely the opposite. “We grow, evolve, and develop through challenges, which is the case with my job. No two days are the same. I am having fun trying to find solutions for the industry, speaking extensively with IoT product companies as well as patent owners.”

Yui Mitsuta
Tokyo, Japan

Yui’s first awareness of IP started with anti-counterfeiting products. Prior to embarking on her career in a major Japanese technology company, she studied IP law and her interest in IP expanded into innovation and patents. One project which Yui was deeply involved in during her previous role meant working with Avanci from outside. The Japanese firm’s automotive business unit and its R&D had differing views on joining the Avanci Vehicle platform, which were ultimately resolved and resulted in the company becoming the first licensor with an automotive industry background to join Avanci Vehicle 4G. That experience of bridging business and R&D units was meaningful and memorable and is extremely helpful for her current role in Marconi, where she is a local interface to our Japanese partners.

She took great pleasure in developing and strengthening relationships with customers, in particular when helping licensees understand the benefits of our independent joint licensing platforms. “My support on the ground in Japan helps us and customers, which give me a great sense of joy and pride.”

A crucial but challenging part of operating a joint patent licensing platform is reliance on support from licensee and licensor partners. “It is almost impossible for us to complete a project by ourselves.” Admittedly, it is key to successfully establishing relationships and continuously nurturing cooperations.

Working in IP usually requires a combination of technical and legal skills. It takes time to harness and sharpen both skills. Women are gradually making inroads into this male-dominated fraternity, especially with a gradual rise of women IP leaders and inventors in the electronics sector. But female IP leaders and inventors are still rare in other sectors in Japan.

Yui sees the growth of patent licensing would bring more opportunities for women to be leaders in IP. She believes that women can have better instincts and more advantages in pool licensing, given that the latter requires more cooperation with others across a large group of companies, compared to bilateral licensing. In her experience, women tend to be more communicative, considerate, and collaborative.

Another appeal to hopefully draw more women into IP is the flexibility and freedom. “IP related work is fairly flexible, and it is not always restricted to working in a fixed location, so it is easy to keep work and life in balance.”

Maria Sekul
Dallas, US

Maria combines her extensive knowledge of patent office practice with in-house engineering experience to build and identify strategic portfolios. Starting as a software telecommunications engineer, Maria recounts that a 3G wireless R&D project introduced her to corporate IP patent strategy from an inventor perspective. She pivoted to patent law after finishing law school.

Her professional journey in IP started at the US Patent & Trademark Office (USPTO) as a patent examiner, which she describes as the hardest job, but also the best experience. Subsequently, she moved to a boutique IP firm, gaining in-depth experience in patent prosecution as a patent attorney. This led to an in-house position at a company with a strong patent portfolio and successful licensing program, where patent prosecution and the assertion and monetization of IP were merged. 

This ultimately led to her role at Marconi, where she brings all that experience into play. As a registered patent attorney, Maria applies her technical expertise to patent application and prosecution, patent portfolio analysis and related matters.

“It’s interesting to understand the concepts and ideas behind the technology of future products and also get an insight into what the future holds,” says Maria. “That is particularly so with telecommunications, where IP is filed on inventions years before it becomes available to the public.” 

Though Maria has worked in a variety of roles, one thing remains constant – women remain dramatically underrepresented in the patent world. “There is definitely room for more women in IP, and especially patent attorneys. In other types of IP practice (trademarks, copyright, litigation), while you need a law degree, a STEM background is not required, and I do see more women practicing in those areas.”

Marconi was founded on a vision of transforming patent licensing, of doing things differently, of challenging accepted wisdom and conventional norms. As part of this, we recognize the value of creating a diverse workplace, one which reflects the diversity of markets and industries that we serve and of our customers around the world. As we continue to grow, we want to ensure that we explore diversity, equity, and inclusion initiatives that can support our vision.

Marconi, together with its Avanci and Innovius businesses, is proud to have joined ADAPT.legal to support their programs and initiatives to increase diversity, equity, and inclusion within the intellectual property profession.

When we founded Marconi five years ago, we had a clear vision of transforming patent licensing. We knew that licensing patents could be – indeed, would need to be – simpler and more efficient. We also knew that, to make that happen, we would have to build a strong team, bringing together many of the world’s leading experts, with experience in getting licensing deals done.

Since then, we’ve done just that. Our senior leaders have hundreds of years of collective experience, gained at some of the world’s leading companies, both patent owners and implementers, including Ericsson, Google, Microsoft, Motorola, Nokia, Qualcomm, and Samsung. To support them, we built expert teams of finance, human resources, legal and technical people, all of whom had risen to the top of their respective disciplines.

Given all of that, it is gratifying when others recognize the strength of our team. Our CEO, Kasim Alfalahi, is listed in both Managing IP’s 50 Most Influential People in IP and in the top 10 of IAM’s Top 40 Market Makers list. Laurie Fitzgerald, SVP Licensing at our Avanci business, was named among the Most Influential Women in IP by World IP Review.

More recently, twelve of our global team members are also listed in IAM’s Strategy 300 Global Leaders, which recognizes the leading professionals in IP – I know of no other organization with such strong results. Importantly, nominations for that list must come from outside of the individual’s organization.

In no small part because of our strong team, our Avanci business was named a Technology Pioneer by the World Economic Forum, joining prior recipients including Airbnb, Google, Spotify and Twitter.

Such recognition, especially from our peers, is both humbling and motivating. We take nothing for granted and will continue to work to maintain the trust and respect of all those we work with every day. To everyone that voted for us, thank you!

Next-generation codecs are not only technologically superior but also better for the environment. The IP industry needs to solve the problems that are holding back their adoption, argues Micky Minhas of Marconi.

For most of us, regardless of industry or sector, the pandemic has transformed the way we work. This is especially true for the IP industry, which had to adapt quickly to a new way or working. While it is easy to think of forced changes as negative, there are several positive learnings I take from the global lockdown experience.

Technology changed the meaning of face-to-face meetings

Tools such as Teams and Zoom allowed global licensing efforts to not just continue but thrive. Before the pandemic, face-to-face meetings were expected and de rigeur at all stages of negotiation whether it was initial introductions, technical discussions, or business discussions. Everything was in-person, even if it meant, as it so often did, traveling to Asia for a single two-hour meeting.

Prior to March 2020, conventional wisdom said that these meetings were a necessity because complicated discussions, sensitive conversations, and negotiations involving hundreds of millions of dollars simply could not be done over the phone or by video. (The irony of an industry that created the world’s most important technologies not relying on those very technologies to get business done was not lost on me!)

This all changed with the pandemic, however, and while in-person meetings will inevitably resume, we have all become more comfortable with video meetings and appreciate the time and cost-efficiency of not losing a week to attend a meeting on the other side of the world. Of course, some meetings will still need to be done face-to-face, but in the future not every meeting in a licensing negotiation cycle will require teams to sit across the table from each other.

Leveraging the power of local expertise

As an international company, we have always recognized the importance of having team members located in key jurisdictions around the world, but the benefits of these relationships paid huge dividends during the pandemic. Unable to travel, we relied more than ever on having expert licensing professionals that we hired in local markets to provide a bridge so that we could continue to serve our clients.

Although our headquarters are in the US, our hiring during the pandemic was almost exclusively in other countries, so that we could make our international teams more robust. This strategy yielded one of our best years ever and inspired our continued commitment to expansion throughout Europe and Asia.

The importance of relationships during uncertain times

While we relied more on technology and new team members, the pandemic demonstrated the importance of our existing relationships with licensors and licensees. The trust and respect that our expert team had earned over the course of decades provided a solid foundation that allowed virtual deal-making to take place. Without this important foundation, perhaps no amount of technology or additional headcount could overcome the challenges of complex licensing.

Looking to the future

The pandemic created a boom in the electronics and telecom sectors as well as the need for additional innovation and associated licensing. I am proud of the way our industry was able to quickly pivot so that the gears of the machinery of international IP licensing continued to operate smoothly. While I look forward to resuming face-to-face meetings and conferences, I also look forward to continuing to enjoy the time and cost efficiencies resulting from the improved ways of doing business which the pandemic necessitated.

We live in a world enriched by amazing technologies, many of which were the stuff of fiction only a few decades ago. Our modern economy is increasingly built on the intersections of industries. Whether it’s the integration of cameras with phones, or connecting a car to the internet, much of the world’s innovation for the foreseeable future will be about creating something new by bringing together different technologies from multiple sources.

In many industries, such sharing has been enabled through the licensing of patents. This is very apparent in the personal computing revolution and the connectivity that smartphones have brought us, for example. Hearing some of the commentary, though, you’d be forgiven for thinking that this licensing is a nefarious activity. In reality, sharing technology through patent licensing (as it is properly understood and practised) is not only good for business, but also for consumers and ultimately for the societies in which we live.

Without the ability to share patented technology through licensing, we would probably see one of two unsatisfactory outcomes: infringement without compensation, which undermines incentives to invest in future innovation; or aggressive enforcement of the exclusionary right conferred by patents, which could have a chilling effect on further advances in technology or more widespread adoption of the patented inventions.  (A third possibility is that a small group of competing firms use their patents defensively to create an implied détente with one another and as a barrier to entry for new firms, thus creating an oligopoly – likewise detrimental to consumers and society.)

Why, then, have the business and profession of patent licensing garnered such a bad reputation in some quarters? I suspect that, at least in part, it has emerged from cases of “innocent infringement”.  A company introduces a successful new product or service based on its own development efforts, only to be approached later by a party claiming that the product or service infringes their patent and requires a licence.  While this may come as an unwelcome surprise, is it not better to have an opportunity to negotiate a licence for a reasonable licensing fee, than to be faced with a lawsuit and the risk of an injunction?

To be sure, opinions on what is reasonable often vary widely.  Recognise, though, that many price negotiations begin with a wide gap, as each party attempts to frame the process in a manner most favourable to its own interests.  Recognise, too, that no sensible patent owner would deliberately set the price so high that the licensed product or service will no longer succeed in the marketplace. After all, a large percentage of zero is still zero.

It is also fair to say that not all infringement is truly innocent.  For example, anyone managing the supply chain of an automobile or smartphone company these days should be aware that these products use hundreds of technologies protected by many thousands of patents.  Similarly, any sophisticated investor in an early-stage wireless communications company should know to confirm that the company’s business plan addresses the need to secure rights to use cellular and/or Wi-Fi patents.  In some cases, overblown criticism of patent licensing is merely part of a cost-reduction effort.

By the same token, there are examples of bad behaviour by patent owners, which have contributed to a negative perception of patent licensing.  When rights holders or their representatives seek to license patents of dubious validity, or in circumstances where infringement is questionable at best, and then abuse the court system to extract settlements for amounts less than the costs of defence, one can understand them being labelled as trolls.  Their behaviour should not really be described as licensing, but rather as abusive litigation.  Thankfully, the vast majority of licensing deals are not the outcome of this sort of approach.

Perhaps the most common frustration with patent licensing these days is simply how long it takes to conclude an agreement.  When negotiations outlast product design cycles, the drain on resources and management distractions are hard to justify.  While there are many possible reasons for this in any given case, let me focus on one in particular: uncertainty.

Those schooled in the art of negotiation know that a deal is more likely to be struck when the parties share a common understanding of the predictable consequences of failing to reach agreement. In the world of patent licensing, that consequence (apart from the patent owner simply going away, the prospects of which the potential licensee will surely take into account) is one or more patent infringement suits, perhaps coupled with a parallel validity challenge.  The more uncertain the outcome of such legal proceedings – and these days, the outcomes are often highly uncertain, especially when multiple jurisdictions are involved – the more each party may feel inclined to take its chances with the relevant courts and agencies.

The legal framework – including patent law, contract law, and dispute resolution processes – that serves as the backdrop to any patent licensing negotiation is created by a global network of judges, legislators and regulators. Undoubtedly, these policymakers take many competing interests into account.  Ideally, they would share the view that one important objective is to facilitate licensing instead of hindering it.  To this end, they should strive to construct a framework that is balanced, stable and generally consistent from one jurisdiction to the next.

While policymakers play an important role, however, business leaders must do their part to improve the perception and reality of patent licensing.  After all, innovation is not solely the purview of engineers and scientists.  When traditional ways of reaching agreement do not work, new ways should be explored.

I’ve devoted the bulk of my career to helping companies do deals designed to accelerate the development and commercialisation of new technologies, most often through licensing.  There is little I haven’t encountered and yet I still learn something new on a regular basis.  In my experience, effective and efficient patent licensing is best achieved through freedom of contract and free market forces.

With a balanced, consistent and stable set of commonly understood principles, creative and motivated business leaders (and their advisers) can almost always find ways to make deals happen.

This article was originally published by IAM.

With more than 200 years of experience in IP management between our senior leaders, we’re often asked for our thoughts on managing a patent portfolio. Here are some of our collected thoughts:

• The five questions any portfolio manager should be able to answer
  A patent portfolio should be managed in broadly the same way as any other portfolio of assets, such as real estate. So, you need to decide:
  1. How much to invest
  2. How to allocate investment between different assets and different geographies
  3. How to generate the appropriate assets (whether through your own R&D or external acquisitions)
  4. How to get a return from your investment (whether in licensing revenue or in better returns for your own products or services)
  5. When to stop investment into certain assets in the portfolio
• Set your goal and stick to it
  Whether it is set up as a defensive or monetization portfolio, the same guiding principles remain, you need to ensure that each patent or family is achieving the overall goals that you have set.
• Build your infrastructure
  To manage IP assets effectively you need to have the mechanics in place to work effectively. In practice, this mean identifying how to best work with patent offices and agencies, how to resource internal operations, what IT tools to use, how to best organize your activities and responsibilities, and what competencies are needed. You also need portfolio indicators which enable you to measure the how and where.
• Get the application phase right
  It’s much easier to adjust patent scope during the application process. This the critical time to get the patent right and ensure it is not too narrow or too broad. As you develop the patent through the process you need to always focus on infringement, regardless of whether the patent is standard essential or non-standard essential. Even when possible, it’s much more difficult to change a patent after approval so spend time and resources getting it right before hand.
• Discriminate
  Not all patents or patent families have the same value. The mistake some companies with large portfolios make is to treat all their patents equally, spending the same costs and resources in the process. Some patents will have high value, some will be of less value but worth maintaining, and others will have little or no value. Spending should reflect the benefit the patents represent to the business. To use a real estate metaphor – some homes you buy to develop further, some homes are fine as they stand and are there to be lived in, and some need to be sold (or condemned).
• Beware of silos
  Often in large companies or with large portfolios, there may be a disconnect between teams responsible for portfolio management and for realizing the portfolio benefits (such as product creation, patent monetization, etc.) as different managers oversee different specialisms. It’s really important is for each team to understand the impact that the decisions they make could have on other parts of the business.
• AI: proceed with caution
  Artificial Intelligence can be useful for mining massive portfolios and prioritizing work. AI can filter data and provide a level of analysis, which can help guide human analysis. But it also has limitations. Many similar patents use differing terminology. AI has difficulty picking up on nuances, or contexts, and will exclude some patents which meet the right criteria and identify others which don’t. In short, it won’t replace human analysis, but can be a helpful tool for prioritizing where to use human analysis.
• Play the long game
  Portfolios need to be managed pro-actively. Most IP assets generate value only after 7-10 years and assets are valuable only if somebody uses them (whether by you in your own products or by somebody else in theirs). Some assets have current value, some assets may have prospective value, and others may need active steps to promote their use, such as in standardization.

Our senior leaders at Marconi have more than 200 years’ collective experience in licensing IP. Just a few weeks into a new decade, we captured some of their predictions for all things patent licensing in the year ahead:

• Pressure to realize the value of intellectual property: As the business effects of the global pandemic bite, we expect to see even more focus on adding revenue streams. While many companies are already exploring how to use their data, we believe that monetizing intellectual property is going to be a stronger focus in more boardrooms this year.
• A continuation of IP nationalism: The global litigation environment will continue to develop and the trend for national courts to try to set global FRAND rates is rising, whether in Germany, the UK, China or the Eastern District of Texas. With no supranational organization having the jurisdiction to set a global rate, using national courts will continue to be a tactic for parties on both sides of IP disputes. While this adds complexity, over the long term the willingness of companies to go to court is slowly making legal positions clearer, although that is little comfort to IP professionals who just want to make good deals in the meantime.
• More consequences for ‘holding out’: German and UK courts have showed a willingness in recent years to issue injunctive relief – and other sanctions for improper behaviour- against implementers that have declined FRAND license offers or refused to negotiate in good faith. Will courts and government agencies in other countries, such as the U.S., follow their lead, and will this be enough to undermine the incentives for “hold out”?
• Evolving qualifications for patent professionals. The use of cloud-based analytics in patent portfolio management has been talked about for years. Whether it breaks through as the prevailing methods or not, mastery of a range of analytics tools will increasingly be a part of the professional requirements. Likewise, the push for in house IP teams to generate income will only add to the need for a more proactive and entrepreneurial approach across the industry.
• A breakthrough year for licensing platforms? An influx of new licensors will add complexity and we believe will make patent pools, platforms and other forms of collective licensing even more important. For Marconi and the licensing businesses we support, working with companies around the world to make the licensing process efficient and mutually rewarding for all is our driving force.

Do you agree? What are you and your IP team preparing for in the coming years?

5G is here and has the potential to provide as much or more value to automakers than to their customers.

Those putting 5G at the top of their intentions and investments will reap the rewards because it will unlock new revenue streams, create a closer connection to their customers, and allow them to stay ahead of their competitors as the automotive industry increases its focus on mobility rather than machines.

Analyst firm McKinsey estimates that mobility and data-driven services such as shared mobility, apps and navigations could create around $1.5 trillion of extra revenue, or a 30 percent boost, in 2030 compared to 2016. Ford and Google’s six-year partnership announced this week, which will see Google assume responsibility for all connectivity, from infotainment to AI in Ford cars, is testament to this.

Crucially too, it’ll allow automakers to have an enhanced and lasting connection to their customers, beyond just the point of sale, giving them the option to offer drivers features such as remote diagnostics, predictive maintenance and online service scheduling.

As cars become more connected as a result of 5G, they will generate and handle mass amounts of data. Data is key and car makers must ensure they can generate the same amount of data that technology companies such as Uber and Lyft do in order to compete as the industry transitions to providing mobility rather than vehicles.

5G is no longer the next big thing. It’s arriving in the auto industry this year and its importance will continue to grow. In the not too distant future, the majority of vehicles will have 5G connectivity on board, with analyst firm Gartner predicting that by 2023 the automotive industry will become the largest market opportunity for 5G IoT solutions.

Avanci is now the go-to global licensing platform for connected vehicles and other IoT devices, with 15 auto brands already on board as licensee and with 40 patent owners on board. More than 16 million connected vehicles on the world’s roads are already licensed through our platform. We’ve taken the complexity out of patent licensing so that automakers can focus on doing what they do best: building the next generation of connected vehicles.