How to select a good IP expert for your business?
An expert view by Gwen ten Berge, Director IP Litigation at VMI Group and President of the Dutch division of AIPPI.
By Charlotte Wittkampf
This is the second blog, resulting from a series of interviews with senior IP experts, discussing the question "What do executives need to know about intellectual property to make better business decisions?" (see webpage of our research project).
Gwen ten Berge is Director IP Litigation at VMI Group and President of the Dutch division of AIPPI. She has a wealth of experience as IP specialist and legal counsel in a diverse range of international, innovative, tech companies. She is a valued sparring partner for the C-Suite, thanks to her deep specialist IP know-how and knowledge, her understanding of and vast experience with business processes and business strategy and her passion for innovation.
There often exists a big gap in communication between specialists and the C-Suite. “They speak a different language. Whereas the C-suite talks in power language about strategy, specialists talk in meaning language about content. The ever challenging job of an in-house IP counsel is to translate the information received from specialists to the C-Suite and vice versa.”
Thanks to her knowledge of IP and vast experience in business, Ten Berge is able to understand and connect the C-Suite and the specialists. Understanding both sides enables Ten Berge to develop and implement an integrated IP strategy. Whereby ‘Integrated’ means that the IP strategy should always serve the business strategy. Only a truly integrated IP strategy will assist the business to reach its goals.
Yet not every company has dedicated and experienced in-house IP counsel. And even though Ten Berge is of the opinion that every executive should know the basics of IP, she also strongly advises any executive to acquire expert advice on IP related matters.
“To properly manage your IP, the selection of your IP specialists is key.”
At one end of the spectrum you have the provider that works according to the principle ‘you ask, we serve’, at the other end of the spectrum you have a fully integrated advisor, who is part of your business.
“Not every lawyer who knows a bit of IP, is able to write a sound agreement in which IP plays an important role. Think for example about liabilities, indemnities, scope of rights, territoriality, exclusivity, and restrictions such as liens. And what happens after termination of the agreement? Take for example a contract with a customer, drafted and agreed upon early on in the lifespan of a business, whereby the customer gets full exclusivity and all IP rights. This can put the supplier in a very difficult position in the long run, because of changing market conditions or changes in the relationship between the customer and the supplier. Beware to have your IP related agreements always checked by a true IP specialist. An IP specialist who does not only understand IP, but also understands your business and understands you.
Moreover you need to be prepared to invest in such advice. The realisation that you need to invest in a good advisor timely, even though you will only know in 10-20 years’ time whether the investment has paid off, is crucial. Patents are expensive, but a wrong IP portfolio is many times more expensive. Think for example about the loss of a strong market position, loss of a customer or even loss of technology.
Yet how can a CEO, or any other executive for that matter, judge whether they are working with a good IP specialist, a specialist that also takes into account your business strategy and ambitions?
Upon this question Ten Berge put forward the following: “A wise man once told me: “I judge people by the questions they ask me.
Assuming any patent attorney should be able to write a proper patent application or trademark agent should be able to file a decent trademark application, a good IP advisor distinguishes him or herself from the others by its understanding of the business. Taking into account the words of the wise man, executives should thus be judging their IP specialists on the questions they pose about their business.
And, as we will all agree, any executive should be able to answer the question: ‘What questions should an IP expert be asking the CEO if he or she truly wants to get to know the business and the business strategy?’
Ten Berge concludes that an IP specialist that is eager and dedicated to invest in getting to know the business will be able to advise that business best. “Only if the IP expert understands the business strategy and gains more insight into the motivations of the C-Suite, he/she will be able to understand the language of the business and will then be able to develop an integrated IP strategy for that business.” Moreover, it is crucial for the C-Suite to timely invest in such advice and to realise this should be a long term commitment for it to be successful.
About the author: Charlotte Wittkampf has extensive in-house IP management expertise with responsibility for managing global portfolios, including both soft and industrial IP as well as related commercial contracting, legal advice and training for different departments of a business and the board with a strong focus on connecting IP with the business.