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International In-house Counsel Journal logoInternational In-house Counsel Journal logo

Open Innovation Collaborations: Practical Guidance for In-House Patent Attorneys

Abstract

Professor Henry Chesbrough first coined the term “Open Innovation” in 2003, describing Open Innovation (OI) as “a paradigm that assumes that firms can and should use external ideas as well as internal ideas, and internal and external paths to market, as the firms look to advance their technology.” OI is now a widely accepted business model. Intellectual Property (IP), particularly patents and know-how, are critical to create and maintain a position of strength for the parties to an OI collaboration. IP creation and protection, and indeed the very success of the collaboration, are in turn predicated on uninhibited knowledge exchange between the parties. Some conventionally held IP doctrines, if followed blindly, could jeopardize agreement negotiations and the subsequent relationship between the parties. One typical example is a rigidly articulated requirement to maintain a “firewall” or “Chinese wall” between confidential information received from your OI collaborator and in-house information already in your possession, based on the fear of tainting in-house knowledge – this fear can have the undesired effect of limiting the exchange of ideas that are vital to the success of the relationship. Another typical example is an insistence on ownership of all arising IP, based on the irrational “need” to control all the arising IP, leading to protracted negotiations or, worse yet, an inability to reach an agreement. We will analyze how an in-house patent attorney can effectively handle some of these IP hurdles. We also emphasize that a successful OI collaboration must have the strong commitment and attention of senior R&D or business leadership, to ensure accountability and to avoid misplaced reliance on the patent attorney as the lead negotiator or principal point of contact between the parties following the execution of the agreement.

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Authors

Portrait image of Matt Goodwin
Matt Goodwin
General Counsel, Intellectual Property, Unilever, UK

Biography 1) Matthew S, Goodwin Matt is currently General Counsel, Inteelectual Property for Unilever. He leads a staff of patent attorneys and support personnel at locations in the UK, The Netherlands, US, India and China. He has over twenty years of extensive experience as a corporate patent practitioner, having worked in various staff and supervisory roles at Johnson & Johnson, and more recently, at ICI, before joining Unilever in 2009. Prior to his career as a patent attorney, Matt worked as a chemical engineer for Rohm and Haas. 2) Rimma Mitelman Rimma has over 20 years of experience as an in-house patent lawyer. Rimma has patent expertise supporting a broad variety of projects within Unilever, leads a group of US patent attorneys in the US, served as Regional Patent Director for Latin America, and has handled complex business disposal and contract transactions.

Portrait image of Rimma Mitelman
Rimma Mitelman
Associate General Counsel, Lead IP Technology Agreements, Unilever, USA

Rimma leads IP Legal support for Technology Agreements - Open Innovation and Innovation Ecosystems, complex multi-party collaborations and consortia: structuring and negotiating agreements for evaluation, development, protection, enforcement, transfer and/or licensing of technology. Rimma's passion is to enable Unilever business with fast and effective technology agreement infrastructure, Rimma's current responsibilities build on her extensive experience as a patent attorney. Prior to her Legal carreer, Rimma was a bench chemist.

Companies

Unilever

Unilever is a supplier of fast moving consumer goods with operations in more than 100 countries and sales in 180. The two parent companies, Unilever N.V. (NV) and PLC, together with their group companies, operate as the Unilever Group (Unilever). Product categories include savoury, dressings and spread; ice cream and beverages; personal care, and home care. The Company's brands include Axe/Lynx, Blue Band, Dove, Becel/Flora, Heartbrand ice creams, Hellmann's, Knorr, Lipton, Lux, Omo, Rexona and Sunsilk. Consumers buy 170 billion Unilever packs worldwide every year, and Unilever products are used over two billion times a day. The Company operates in Asia, Africa, Europe, and the Americas.

Unilever logo

Unilever

UNILEVER IS ONE OF THE WORLD’S BEST KNOWN CONSUMER GOODS COMPANIES. EVERY DAY, 2.5 BILLION PEOPLE USE OUR PRODUCTS TO FEEL GOOD, LOOK GOOD AND GET MORE OUT OF LIFE. We are truly global, operating in more than 100 countries, selling our products in more than 190 countries and employing around 169,000 people. Unilever spends €1 billion annually on research and development, employing approximately 6,000 experts to drive innovation, often in partnership with suppliers and academia. Unilever barnds are household names, including Axe & Lynx, Blue Band, Dove, Becel & Flora, Heartbrand ice creams, Hellmann's, Knorr, Lipton, Lux, Omo, Rexona and Sunsilk.

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