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est practices Surfacing Patentable Corporate Innovations ROBERT J. PUGH | THE PNC FINANCIAL SERVICES GROUP, INC. Robert J. Pugh is chief counsel, Technology and Intellectual Property, at The PNC Financial Services Group, Inc. in Pittsburgh. Robert recently co-chaired Counsel to Counsel forums on this subject. He can be reached at robert.pugh@pnc.com. implementation steps Most companies recognize the value and situation importance of patenting corporate innovations. For some industries, such as the financial services industry, these protectable innovations include processes, generally implemented by computers, involved in operating a business or that define a service offering (sometimes referred to as “business methods”). However, many companies in these same industries do not have a long history of or established culture surrounding patenting such innovations. in-house counsel challenge Corporate counsel must establish a simple way to identify new technology-based systems and processes that may be candidates for patent protection. This can be especially difficult in industries where there’s little history of seeking such patents. approach adopted Begin with an internal education program. Develop and broadly distribute informational materials explaining the types of methods and systems that are patentable and why patent protection is important. Include any examples of innovations your company has already sought to patent. Target for more focused communications those areas within the company that are most likely to develop patentable innovations, such as departments responsible for product or application development. Establish points of contact for those seeking more information. Try to leverage existing databases and systems within the company to help identify patentable innovations. For example, check with your IT department to see if your company currently employs one or more databases to track technology-based projects. PNC, for example, maintains a “Technology Initiatives” database. When new technologybased initiatives are launched, they are entered into and tracked within this database. The project managers enter information concerning the initiatives into the database, including their name, department, contact information and detailed descriptions of the initiative. • Spearhead a campaign that explains what is patentable and why patent protection is important. • If possible, provide examples of systems and methods your company has already sought to patent. • Provide extra focus to those areas of the company most likely to develop patentable methods or systems, such as the product or application development departments. • Check with IT to see whether a database already exists for tracking new technology-based initiatives. • Leverage that database to obtain leads on potentially patentable technology-based systems and methods. To leverage the database, the Legal department added a simple yet effective step—embedding a short series of “yes” or ”no” questions concerning the initiative into the database and requiring each project manager to answer them. Examples of these questions include: “Does your initiative involve a system or process that is not currently available from a vendor?” and “Are competitors using similar systems or processes?” The questions take less than a minute to answer, and, if certain responses are given, an electronic communication is automatically forwarded to Legal identifying the initiative as one meriting further investigation. Often, these types of project tracking databases already include codes to identify the type of initiative. You can set up the questions so that when certain codes are selected (such as routine building maintenance) the questions are not presented, since these types of initiatives are unlikely to involve patentable innovation. measuring success The electronic tool described here has helped bridge the gap between the PNC Legal department and those who develop new business methods and systems, accumulating numerous leads on potentially patentable developments. As a result, PNC is building a solid portfolio of pending patent applications. 12 www.martindale.com
DYKEMA Establishing the Corporate Defense best practices The pace and breadth of mass tort litigation situation continues to expand. As a result, in-house counsel at large national or multinational corporations are increasingly faced with complex, voluminous, multidistrict product liability lawsuits involving personal injury, property damage and/or economic loss. in-house counsel challenge Crafting an aggressive corporate defense, whether it’s a relatively isolated matter or a bet-the-company case, requires identifying and gathering case-specific facts, documents and input from witnesses and expert witnesses; and ensuring that highly technical issues are translated into concepts that are easy for a jury to understand. implementation steps • Identify affected divisions/business units. • Create a product time line that identifies important facts, witnesses and documents. • Interview key internal contacts and opposing witnesses. • Review transcripts for testimony that supports your case. • Gather case-related documents. • Test and refine your story. • Choose/prepare expert witnesses. approach adopted The defense process starts by assessing the company’s current standing in terms of facts, product history, witnesses and internal documents. Begin by identifying the affected division or divisions and retrieving all applicable organization charts. This will help you 1) determine how the organization was structured when the product was developed, 2) identify key players who may ultimately serve as witnesses and 3) identify where important documents are stored. If product development dates back 10 or more years, chances are the organization has changed—perhaps dramatically. Then, build a product time line, which will help establish and prioritize the facts of the case. The goal is to create a fact chronology. How did the product design play out? What departments and individuals were involved? Were there any early issues or problems? And if so, how were they resolved? Include disputed facts and previous litigation, if there are any. Make the time line as detailed as possible because you will refer back to it often. Does the past or current litigation involve the same product or issue? Are there similarities in the plaintiffs? Which firms are bringing these cases? The time line will bring all these issues out into the open. The process will also help identify key internal players, develop a potential defense strategy and hone your discovery objectives. Once you arrive at a defense strategy, it’s far easier to get internal people to talk to you. Then you can review deposition transcripts—including opposing witnesses—to uncover testimony that supports your strategy. Apply the same approach to e-discovery. You want and need the discovery and discovery response to be strategic. Considering the cost, you need to know what you’re looking for, versus mass document retrieval. Use the time line and plan your discovery and response accordingly. Draft the corporate story and test it. Start at the trial stage and work backward. Ask, “Do we have enough pieces to put together our story for this trial? Or are there still holes in the time line?” Continue to massage the story until it is simple enough for any jury to understand. Once the defense is established, review your expert witness list. If you’ve done your homework, you’ll know which experts are a good fit. Then coach them to ensure they will address their topics exactly the same way every time, regardless of where the case is tried. measuring success Creating the corporate story requires a comprehensive review of all product-related documents, witness interviews and caserelated facts, both good and bad. This legal “audit” is the road map that will help inside counsel ascertain the strength (or weakness) of the company’s position and craft its defense strategy accordingly. Sherrie L. Farrell, a litigator and member in Dykema’s Detroit office, coordinates and provides discovery strategies for companies involved in multidistrict litigation and mass tort claims. She can be reached at sfarrell@dykema.com. JULY 2007 13
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