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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