TPN Europe 2019: In-house counsel waiting for AI to arrive

Technology could pave the way for in-house counsel to streamline their portfolio management strategies, but the changes are unlikely to be far-reaching in the short-term.

This was the view of the panel at today’s session “Day-to-Day In-House Counsel Challenges: How Are Corporations Protecting their Innovations?” at Technology Patent Network Europe 2019, hosted by WIPR in London.

Victoria Hair, Europe, Middle East and Africa AI attorney at Intel’s legal department, said that she could see new artificial intelligence (AI) solutions becoming available, which will change the role of in-house counsel management over the next five years.

In the short-term, however, Hair said she expected these AI solutions to simply augment decision-making. Any fundamental changes to the industry, she said, were likely to come further down the line as the technology develops.

Similarly, Anne McAleer, director of IP at IDEX Biometrics, said that she couldn’t see AI radically reshaping portfolio management for in-house counsel in the next five years.

McAleer noted that in her day-to-day work she still receives emails with PDF attachments, which have to be manually docketed. Emerging technologies could help streamline some of these “tiresome” processes, McAleer said.

Chris Hardingham, senior director, patent creation and operations at NPX Semiconductors, said that there were significant ethical challenges for in-house counsel to grapple with when it came to these new technologies. He cited the example of self-driving cars and liability for accidents caused by these vehicles.

“These ethical decisions are huge, and they will impact what we do and what we try to protect,” Hardingham said.

In a wide-ranging discussion that dealt with the day-to-day challenges of being an in-house counsel, the panel also touched on how to manage the expectations of company owners against a limited budget.

McAleer said that throughout her career, she was at times faced with the difficult decision of pruning a company’s patent portfolio in order to reallocate resources more strategically. This could sometimes be a difficult case to argue to others in the company, she explained.

“It’s useful to break down the budget; look at how much we’re spending on renewals … look at how much we’re spending on prosecution and new filings so that people understand the balance,” McAleer added.

Hair said that one of the advantages of working as part of a large legal team (500 strong in the case of Intel) is  always able to ask for advice from colleagues when needed on a specific issue.

Hardingham added that he had to take on an increasingly greater management role as his career progressed, but said he was determined to still find the time for more traditional practice.

“The day I give up practice completely will be the day I retire,” he said.

The session was moderated by Ed Round, partner at Marks & Clerk.

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