Most enterprises have always regarded intellectual property rights as legal rights, so intellectual property rights have always been managed by the legal department, which is responsible to the chief legal officer, general counsel and the intellectual property legal department of the company. The specific function of the intellectual property department is to apply, register and safeguard the company's patents, trademarks and copyrights through government management channels; At the same time, trade secrets are protected by signing confidentiality agreements and internal security measures with employees and third parties. It is often considered as the responsibility of the legal department to operate these rights through legal procedures and commercialize them in inter-company transactions. Due to the management difficulties caused by the monopoly of the legal department, some companies slowly transfer some functions of intellectual property management from the legal department to the R&D department. However, the problem of decentralization of management power has emerged again.
When intellectual property evolved into an asset type, the exchange and cooperation between intellectual property departments and other departments spanned R&D, business development, strategic planning, enterprise financing, government relations and so on, and continued to expand. In this case, if intellectual property is still locked in the cage of the company's legal department structure, the value of intellectual property will not be optimistic. If the person in charge of the intellectual property department reports directly to the top decision-maker through chief law officer or the chief technology officer, there is a defect, because the information must be screened by them first, while chief law officer pays more attention to risk control and the chief technology officer pays more attention to product research and development, so there is no interaction between intellectual property and other departments.
More and more enterprises manage intellectual property rights as strategic commercial assets. Chief intellectual property officer is an ideal design for enterprises in the transition period from intellectual property cost center to intellectual property profit center. The core reason for the success of centralized management of intellectual property rights is to effectively manage the relationship between relevant departments of intellectual property rights and manage the flow of profits. The chief intellectual property officer enables enterprises to effectively cope with the rapidly changing geographical environment of intellectual property rights, such as patent reform and business models related to intellectual property rights, which are increasingly attractive to institutional investors.
In this case, the change of management becomes necessary. With the increasing importance of intellectual property in enterprise operation, many large traditional enterprises have also set up positions equivalent to chief intellectual property officers, including chief intellectual property consultant, chief patent consultant, intellectual property supervisor, vice chairman or executive director in charge of intellectual property, etc. Many intellectual property-based start-ups and some professional patent licensing enterprises have set up the position of chief intellectual property officer.
If CEO is CEO, CTO is CTO and CFO is CFO, then the chief intellectual property officer should be CIPO.
(A) management framework design
To set up a chief intellectual property officer, we must first clarify the position of the chief intellectual property officer on the management organization chart, such as who to report to? Who reports to him? Wait a minute. The position of chief intellectual property officer is determined by the importance of intellectual property in enterprise operation. Generally speaking, the CEO of intellectual property should report directly to the decision-maker (chairman, CEO) or decision-maker (board of directors) of the enterprise. The chief executive officer of intellectual property may have intellectual property management personnel, and may be equipped with relevant legal personnel, patent management personnel, intellectual property licensing personnel, business cooperation personnel, etc.
The duties of the chief intellectual property officer in enterprise operation include: intellectual property protection, intellectual property contract management, intellectual property asset management and monetization, intellectual property litigation, enterprise intellectual property report, etc.
The departments related to the Chief Intellectual Property Officer include: chief law officer (CLO), Chief Technology Officer, Chief Financial Officer, Chief Marketing Officer, Chief Executive Officer and Chief Operating Officer. There is considerable overlap and cooperation between Chief Technology Officer and Chief Intellectual Property Officer in patent layout, R&D project management, intellectual property application support, intellectual property protection and strategic intellectual property planning.
The cooperation between chief law officer and the Chief Intellectual Property Officer is mainly in intellectual property protection, such as infringement analysis and litigation management. The chief marketing officer needs to formulate and implement the brand strategy of the enterprise and disclose and publicize the patent information, which is inseparable from the cooperation of the chief intellectual property officer.
The Chief Financial Officer is in charge of financial operation, intellectual property budget, intellectual property asset operation, intellectual property monetization, patent acquisition, profit forecast, financial report related to intellectual property, tax planning, etc., all of which cannot be separated from his support. Chief operating officers are responsible for the strategic operation of enterprises, and they make major decisions such as mergers and acquisitions, joint ventures and strategic alliances, and key intellectual property rights authorization projects. The Chief Intellectual Property Officer needs their support in these areas.
The CEO's job is different for every enterprise, depending on the maturity of intellectual property management, the scale of intellectual property operation, the management culture of intellectual property, and the profit model of the enterprise (product-oriented enterprise, service-oriented enterprise or intellectual property licensing enterprise). In addition, different industries have different habits, and each industry has different intellectual property management.
In terms of business distribution, intellectual property litigation is more controversial. Is the chief intellectual property officer solely responsible or mainly responsible, or jointly responsible with the legal department? Does the chief intellectual property officer not participate in intellectual property litigation? These should be considered clearly when opening positions. In addition, because trademarks and copyrights are quite different from patents and technical secrets, it is also a problem whether to hand over trademarks and copyrights to the legal department completely, and the chief intellectual property officer is responsible for technical intellectual property rights such as patents and technical secrets.
The chief intellectual property officer must have sufficient resources. Only after providing sufficient resources and needed employees can the chief intellectual property officer plan and manage intellectual property 360 degrees. He can't use other colleagues' personnel and resources to work, and the new team focuses on intellectual property rights. Some people will criticize it, which will undoubtedly increase more institutions and unnecessary management. This view fails to understand and discover the huge economic potential of carefully managed intellectual property rights. Many employees will be transferred from the Legal Department, R&D Department, Business Development Department, Finance Department and other departments. At first, there will be a scuffle within the company, but in the end all these departments will benefit.
(b) Perfect Chief Intellectual Property Officer
The chief intellectual property officer needs to have a 360-degree inspection and management of intellectual property rights to tap the maximum value and reduce risks. In this way, the perfect chief intellectual property officer should have a lot of experience and skills. The key to identifying whether a person can be qualified for the position of chief intellectual property officer is to see whether he has the following abilities;
The first skill is to have a firm grasp of the company's intellectual property assets and intellectual property-related risks.
This requires candidates to have a comprehensive grasp of intellectual property laws, as well as sufficient legal experience in the legal environment related to enterprise operation, and have a considerable understanding of intellectual property laws in the relevant countries in the market where the company is located. This knowledge must include three branches of law: patent, copyright, trademark and trade secret protection; Commercial transactions related to intellectual property rights, including but not limited to licensing and implementation; Dispute settlement rules of courts and administrative agencies such as the United States International Trade Commission.
The second skill is to have a good understanding of the company's short-term and long-term strategic goals and current business operations.
These business objectives and operational knowledge enable the chief intellectual property officer to describe intellectual property opportunities efficiently and minimize intellectual property risks.
The third skill is the understanding of all technical fields and business markets of the company.
This kind of understanding must reach the level of understanding the troubles of technology and market, which greatly affect the company's business objectives and business model.
The fourth skill is business experience and process, including high negotiation skills, budget and financing experience and strong management ability.
The chief intellectual property officer must be a team builder who can effectively recruit and train team members.
The fifth skill is high interpersonal skills and strong personal emotional control.
The CTO must be able to clearly and concisely communicate the planning and implementation of intellectual property rights to the CEO, colleagues, board of directors, shareholders, critics and analysts, and the media. Must be a good team leader, able to cooperate with others and get everyone's support. His work can only be effective with the cooperation of senior officials who get the general prefix.
The sixth skill is leadership and hole testing.
He must be trusted and respected. He needs the cooperation of many departments, and it is difficult to carry out his work without trust. He has to deal with many high-level people who have direct contact with intellectual property rights and convince these colleagues that he is qualified for the job, not just making plans and agendas. Many chief intellectual property officers resigned because their colleagues thought they could not carry out their plans.
It can be seen that the post setting of the chief intellectual property officer is the intersection of intellectual property, technology and commerce, which requires working knowledge of intellectual property laws, policies and practices. Must reach the legal level of an intellectual property lawyer, understand relevant technologies, markets and industries, and have practical experience in negotiation and contract management, invention process and intangible assets evaluation.
In terms of personal qualities, the chief intellectual property officer needs the instinct of an entrepreneur, and must be a result-oriented manager with strong execution, an efficient communicator, a person who provides convenience for those who agree to adjust the harmonious relationship, a cross-disciplinary leader and a trustworthy intellectual property consultant.
Where does the Chief Intellectual Property Officer come from? Many of them come from intellectual property consultants, others come from the business development, technology transfer or licensing departments of the company, and some are former senior government officials who have been engaged in intellectual property work and have experience in government, enterprises or academic services.
(3) Responsibilities of the Chief Intellectual Property Officer
1, Company Development -M&A
Traditionally, M&A is led by business development and external financial and legal consultants. In the final stage, we often consider the intellectual property part, but when the intellectual property risk becomes an obstacle, we invite the intellectual property consultant to ask him if there is any intellectual property risk, which generally refers to the reality and potential risk of third-party infringement claims, because it is very important and can make the transaction fail.
This common method is very pessimistic, because almost all of them focus on the risks of third-party intellectual property rights, rather than analyzing and evaluating whether the intellectual property rights of the target company are worth trading as a decisive factor, and which method is appropriate, such as mergers and acquisitions, buying stocks or buying assets, and more importantly, considering the price.
The chief intellectual property officer can correct this inefficient method, consider M&A opportunities from the perspective of intellectual property, and evaluate strategic fit, competitive advantage, M&A opportunities, cost and value. If the CEO becomes a member of the M&A team and manages intellectual property transactions at every stage of the process, the intellectual property issue will not drag on until the end. Intellectual property rights will be the focus of basic consideration from the beginning and become a tool to support transactions and negotiations.
The chief intellectual property officer can increase the company's value in merger and acquisition, company divestiture, joint development and strategic alliance. If intellectual property rights are raised to the "overall" level, intellectual property rights will be considered in the formation of M&A strategy and all important early stages.
2.R&D, strategic plan and standards
An effective R&D plan can produce competitive advantage and give the company a first-Mover advantage. Effective intellectual property management can produce new competitive advantages. Under the traditional corporate R&D model, intellectual property rights are the fruits of natural maturity on the R&D tree. In an intellectual property-oriented company, the intellectual property department has the obligation to shake the tree and ensure more fruits. But under this condition, intellectual property is only a by-product of research and development.
The highest level is the guided invention mode. This model includes finding the blocking points and roadblocks on the road of future technology research, then organizing internal and third-party consultants and other R&D resources to solve these problems, and then applying for a wider range of patent protection and layout patents before other competitors emerge. In this way, intellectual property rights will become a driving force rather than a by-product. The interaction between intellectual property and R&D department is the key to success. Only by upgrading the intellectual property personnel to "GM" can this exchange and cooperation be completed.
Strategic intellectual property planning requires a detailed understanding of the patent fields operated by the company and related patents of third parties, which is the basis of strategic planning. The chief intellectual property officer can draw an accurate map of related patents. This is especially important in the United States, because intentional infringement will bring terrible danger to the company.
In this way, it is necessary to obtain the latest information about R&D, business development and strategic planning, so as to keep the patent map in step with the development. It is necessary to use complex computer tools to realize timely and in-depth patent terrain evaluation information to evaluate new products, new services, markets, M&A opportunities and patent litigation.
In the contact with standard-setting organizations, the chief intellectual property officer and the chief technology officer also need to cooperate. For many emerging new technologies, standards are the driving force for business success, so an inventor society can create a new market. For the poor, the standard of owning their own patents may become an obstacle or toll booth for competitors; In the long run, participating in standard setting and organizing activities is a necessary condition for the growth of companies in many industries. The chief intellectual property officer should intervene in the activities and decide whether and to what extent the company's patents belong to the licensing responsibility of the standards organization, and the related potential antitrust and patent abuse risks must be carefully considered by the intellectual property officer.
3. Protection of legal rights
In most companies, the function of intellectual property protection is located in the Ministry of Justice, and the person in charge of intellectual property directly reports to the Chief Legal Officer, General Counsel and Deputy General Counsel. Conceptually, the newly established chief intellectual property officer is the same as them in the level, so the distribution of responsibilities in intellectual property rights has become a problem, especially in intellectual property litigation.
It is certain that the heads of the two departments work closely together, but who is in charge? Every company is different. The scale of the company, the culture of the company, the complexity of technology, the legal experience of the chief intellectual property officer and personal ability are all very important.
Some people think that the power of intellectual property litigation should be given to the chief intellectual property officer, because litigation becomes an indispensable factor in intellectual property licensing, especially in the context of litigation. Especially in the early stage of licensing negotiations, the responsibility for this interaction is concentrated on one person.
The reason why it is retained in the general counsel is that intellectual property rights are an important source of legal risks, and managing legal risks is the responsibility of the Legal Department.
4. Public policy and government affairs
Whether in the United States or China, the intellectual property work of enterprises has a considerable relationship with the government. For example, the United States has gathered strong market forces to promote the reform of patent law in recent years, and intellectual property institutions may face great changes in recent years. These changes will lead to academic conflicts between the Supreme Court and the Federal Circuit Court, as well as between shareholders and powerful parliamentary lobbies.
In China, the national intellectual property strategy is being implemented, and various incentive policies are constantly being introduced. The work of the Chief Intellectual Property Officer in this respect cannot be ignored.
5. Tax payment plan
Intellectual property rights are closely related to taxation, especially if the company's business is all over the world. Careful planning of intellectual property ownership and transnational intellectual property licensing agreements can produce huge tax benefits and savings. In the United States, there will be great tax savings if an independent company located in a state with lower intellectual property tax controls the intellectual property rights of the company.
Chief intellectual property officer sets obstacles.
In practice, the establishment of the chief intellectual property officer faces various obstacles. The first is to resolve the conflict between the Chief Intellectual Property Officer and the existing Chief Technology Officer and chief law officer. The establishment of a new position will affect the power of the original position, and conflicts are inevitable, and coordination ability is particularly important. Conceptually, traditional enterprises often think that minimizing the risk of intellectual property rights takes precedence over maximizing the value of intellectual property rights.
If this can't be overcome, the chief intellectual property officer will do nothing, circle around the legal department, or compete with chief law officer for a position. In addition, the establishment of the new chief intellectual property officer will increase the complexity of the organization and add another channel to report to the top management. Whether it is necessary depends on the actual needs of enterprise intellectual property management, rather than chasing fashion.
Around the world, there is substantial resistance to the chief intellectual property officer, especially those large companies with mature institutions. The important reason is that other managers with the prefix "total" have to give up something, and what they give up may be the most profitable part, they control some parts of the company, or their ability to control personnel and financial resources. This is a challenge to tradition. Companies, like individuals, are always content with the status quo, and the resistance to creating new high-level positions is not difficult to understand. More complaints focus on the legal nature of the new position, and it is believed that putting intellectual property rights in the Ministry of Justice is more conducive to controlling litigation risks.
New technology companies and intellectual property licensing companies are the opposite. They understand the importance of intellectual property rights to their business model and future growth. These new companies have no rigid bureaucratic management structure, and tend to concentrate their intellectual property functions on one person, who reports directly to the CEO and often wears several hats. For smaller companies, they will outsource related functions to an expert, who is essentially the chief intellectual property officer of several companies.
Look, can you do it? If you can, you need a Bole distance; If not, it really needs a light-year distance.