Clause 8 Eli Mazour

For almost 30 years - under the leadership of giants like Marshall Phelps, David Kappos, and Manny Schechter, IBM led in obtaining the most patents per year. However, in 2020, IBM made the decision to no longer pursue the goal of “numeric patent leadership.” It went from obtaining over 8500 patents in 2021 to, by some counts, less than 5000. Nonetheless, IBM remains one of the top American patentees.
Mark Vallone joins Eli to discuss how he stepped into one of the most significant roles in the patent world last year while this dramatic shift in IBM’s patent strategy was taking place.
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On this episode, Mark talks about how IBM's heritage of innovation and patent leadership informs its decisions. He also provides an in-depth perspective on why and how IBM transitioned away from numeric leadership goals and toward a more balanced, quality-focused approach.
The episode provides thought-provoking insights into the challenges of growing and managing a vast IP portfolio, including the value of incentive programs for inventors and the mechanics behind strategic patent portfolio pruning decisions.
Key Topics:
* Succeeding as in-house counsel
* IBM's Strategic Shift - departing from their numeric patent leadership goal to focus on patent quality and aligning with their current business model.
* Portfolio Management - detailed advice on pruning patent portfolios, including strategies for maintenance fees and monetization.
* Hybrid Model - how and why IBM uses both in-house and outside counsel for patent preparation and prosecution work
* Harnessing AI in Patenting - the future role of generative AI in improving quality of patent applications and the productivity of patent drafters, and the importance of cautious adoption considering legal and ethical implications
Notable, Quotable
On continued role of numeric goals
"I don't think you abandon numbers. I think they're certainly a part of the calculus, and you have to look at that in order to adequately protect your business."
The one change he’d make to America’s patent system
"I would love to see us fix subject matter eligibility. I would love to see us restore that certainty to the system."
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J. John Lee is the Chief Counsel for IP in the US House of Representatives and helms the House Subcommittee on Courts, Intellectual Property, and the Internet, which is chaired by Congressman Darrell Issa.  In that role, he is one of only four staffers in Congress who focus on IP issues and help set the agenda for what happens with America’s IP system.
John joins Eli on this lively episode to discuss how he ended up in that role after serving as a Lead Judge on the PTAB, how he is currently working closely with the other IP staffers in Congress to advance legislation to fix Section 101 and the PTAB, what it will take for Section 101 legislation to pass, why broad consensus is necessary for IP legislation, what’s driving the bitter disagreements over IP issues, and much more!  The episode was recorded at the end of last year.  
If you know anyone else who might be interested to learn what changes might be in store for patent law or how the patent policy sausage is made in Washington, please share with others:
Selected Timestamps
| 0:04:52 | How John Lee became Chief Counsel for IP in the House of Representatives |
| 0:08:05 | John Lee's role as Chief Counsel for IP and his relationship with Issa and Judiciary Chair Jim Jordan |
| 0:10:18 | John Lee's experience stepping into his role on the Hill |
| 0:12:13 | Making positive impressions on IP staffers in Congress |
| 0:16:04 | Trajectory of patent system over last 20 years |
| 0:24:52 | Proposal to exercise march-in rights under the Bay-Dole Act |
| 0:31:27 | Administration’s failure to build consensus on - and widespread congressional opposition to - proposals to waive & seize IP rights|
| 0:33:26 | Uncertainty and lack of administration policy on standard essential patents (SEPs)|
| 0:38:08 | The need to protect US leadership in technology and innovation |
| 0:39:19 | Concerns about the state of Section 101 and the weaknesses of the patent system |
| 0:44:04 | How patent system creates an innovation engine by encouraging disclosure of innovations |
| 0:45:12 | Importance of consensus for significant changes in IP law |
| 0:49:54 | Cooperation between Republicans and Democrats on IP, AI, and other related issues |
| 0:53:39 | Heated opposition in House on USPTO’s ANPRM proposing changes for the PTAB |
| 0:57:12 | Optimism for patent bills and substantial progress in the House and Senate. |
| 1:02:28 | Possibility of introducing companion bills for Patent Eligibility Restoration Act (PERA)|
| 1:05:13 | Pain points that might drive agreement on Section 101: third party litigation funding, discretionary denials at PTAB, and standard essential patents (SEPs) |
| 1:06:26 | Negative impact on Federal Circuit from suspension of Judge Pauline Newman |
| 1:07:57 | Role of lobbyists in development of IP policy |


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In this special two-part episode, we delve into the creation, implementation, and strategic importance of Europe's Unified Patent Court (UPC) with UPC Judge Michael Fleuchaus and Dr. Benjamin Grau.
 
The first part of the show highlights Judge Fleuchaus' experience as a newly appointed technical qualified judge at the UPC. Judge Fleuchaus discusses the motivations behind the UPC's establishment and overarching goal to streamline patent litigation across the European Union. He also discusses his role as a technical judge working alongside experienced legally qualified judges and shares the perspective they bring to handling cases together at the UPC.  This segment provides priceless insights about how UPC proceedings differ from patent litigation within and outside of Europe and how litigants can maximize their chances of success at the UPC.  
 
In the latter part of the episode, Dr. Grau provides a distinct viewpoint as a European patent attorney closely observing the UPC. Dr. Grau casts light on the myths and practicalities surrounding opting in or out of the UPC and gives valuable advice on how to leverage the UPC to obtain the best possible patent protection in Europe. Dr. Grau's perspective is crucial for those interested in understanding the strategic considerations that come into play with the UPC's inception.


This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

This year, the U.S. Chamber of Commerce brought together a diverse group of stakeholders and thought leaders in support of a framework of IP Principles.  These IP Principles are part of an initiative to help America overcome a sustained effort to demonize intellectual property rights over the last 15-20 years. 
 
Patrick Kilbride and Brad Watts, from the U.S. Chamber’s Global Innovation Policy Center (GIPC), join Eli to talk about leading this initiative, the current narrative on IP rights and the forces that shaped it, the themes of the IP Principles document, and what they hope to accomplish.  They also discuss why the U.S. Chamber cares so much about IP issues, whether patents are underappreciated compared to other IP rights, and much more!
 
IP Principles: https://www.uschamber.com/assets/documents/A-Principled-Approach-to-a-New-Narrative-on-IP.pdf


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Matteo Sabattini is well known in DC patent policy circles from his previous role as Director of IP Policy at Ericsson.  He now joins Eli from Italy to discuss his new role as President and Chief Licensing Officer of Convida, what he learned from his time in DC, keys to building a successful licensing program, why recent attempts to regulate licensing of standard essential patents (SEPs) are misguided, and much more!
 
Selected Timestamps
| 0:11:03 | How shifting value from devices to services & platforms impacts who should license patents |
| 0:17:46 | Licensing fueling further innovation |
| 0:18:56 | Successful licensing means getting to point where both sides are equally unhappy
| 0:19:20 | Importance of communicating the value of R&D for a successful licensing program |
| 0:21:17 | Feedback loop between licensing and prosecution departments is crucial |
| 0:25:41 | Why litigation is not always an indication of bad faith|
| 0:26:30 | Unwilling licensees posing a toll on innovation |
| 0:32:35 | Lessons learned from working at Sisvel |
| 0:34:38 | Avanci and others proving that markets are functioning efficiently because of industry-led, licensing solutions and that new government regulations aren’t necessary |
| 0:38:57 | IEEE's patent policy change sparking Matteo’s interest in policy|
| 0:40:44 | Taking on policy role at Ericsson at low point of America's patent system|
| 0:44:03 | Need for coalescing between different pro-patent interest groups |
| 0:48:14 | Impact of issuance and withdrawal of SEP policy statements in the US |
| 0:51:11 | European Commission's draft SEP proposals to supposedly help SMEs |
| 0:56:22 | Idea to actually help SMEs with licensing of SEPs instead of unworkable regulation |


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Ed Murgitroyd joins Eli Mazour to tell the stories of building Murgitroyd into one of Europe’s biggest IP law firms and his disruptive new venture Hexos IP.  Murgitroyd was founded by Ed’s father Ian Murgitroyd in Scotland in 1975.  Ed eventually joined his father and became the CEO of Murgitroyd before it was acquired by a private equity firm, Sovereign, in 2019.     
On this episode, Ed talks about:
Story of his father, Ian Murgitroyd, starting Murgitroyd in Glasgow in 1975 thanks to a loan from a mysterious benefactor Growing into one of the world’s biggest hubs for IP services Expanding into Europe and all over the world through acquisitions & why some of those acquisitions failed Murgitroyd becoming the first and only law firm to go public on the London Stock Exchange Lessons learned sitting across from his father How moving to the states with his American wife led to a hard-won windfall for Murgitroyd Why Sovereign’s acquisition for £63 Million left a bitter taste Non-attorney ownership of law firm & why “who’s pulling the strings” is what ultimately matters Hexos IP disrupting the global renewals and annuity services industry Mentioned article: “Ian Murgitroyd pens a Letter to my Younger Self” https://www.insider.co.uk/special-reports/ian-murgitroyd-pens-letter-younger-17680540


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