When asked what Jenny did for a living, she'd reply that she was an attorney. When pressed for something more specific, she’d respond, "I’m an IP attorney". Indeed, intellectual property law was her chosen legal field since before I met her in the late 90s.
I found out only a few days ago, though, that not even her kids had a good grasp of what Jenny actually did as an attorney. Although already proud of their mom, I want them to know what she did and how she used her many talents at work. I thought about what would be the high-level questions one would have about Jenny and her work. These include, what were her responsibilities as a lawyer? What does “IP” mean? Also, what’s with the “Ko” instead of “Chow”? And, perhaps most importantly today, did her work have any lasting impact? I'm delighted to answer those questions and more in this post, FAQ style:
What is IP?
IP stands for "Intellectual Property", or creations of the mind or intellect. The four broad categories of IP are patents (authority to exclude others from making, using or selling an invention), copyrights (protects original works of authorship like music, software, etc.), trademarks (a word or symbol representing a company or product) and trade secrets (e.g. KFC's 11 herbs and spices recipe). An IP attorney addresses the legal aspects of one or more of these and Jenny's scope spanned all four of these categories.
What were Jenny's responsibilities?
Jenny's scope spanned all four categories of IP. And, for her, no two days were ever the same. But, to rank her responsibilities, roughly by amount of time spent:
1. Licensing–Let’s say you want to manufacture a product but find out that a patent is owned by someone else, hence blocking you from making that product. One possible path forward is to take out a license to that patent if you can come to an agreement with the owner. That’s where Jenny came in. She represented the patent owner (her employer) and would structure the licensing deal, which Jenny also needed to stamp and approve.
Part of this role is also pursuing those who might be infringing patents belonging to her employer. If Jenny felt there was another party infringing her company’s patent, she would start by keeping things friendly. She would send that party a note saying, essentially, “Hey, we’re aware of your products and thought your company might want to take a license to these patents…” Any attorney reading the message on the other end, though, would realize Jenny’s saying very politely, “We think you’re infringing our patents, so stop selling those products or pay up”.
2. Patent generation–In many publications, including for example Jared Diamond's Guns, Germs and Steel, patents are cited as a key reason for the Western world's technical advances during the Industrial Revolution. Patents gave the individual inventor financial rewards and legal protection associated with technical ingenuity. Jenny took this notion and put into place a structure that rewarded the individual employee to motivate innovation.
Moreover, she led patent committee meetings to decide how inventions would be managed. Should an idea be patented? Or, should it be kept as a trade secret? Jenny would try to have these questions answered. There was also a less glamorous side of this process that she had to address. She had to make sure, for example, of correct inventorship. This tedious task was necessary because not having a correct list of inventors can invalidate a patent.
Also, although Jenny was qualified to prosecute patents (that is, actually draft them and interact directly with the United States Patent and Trademark Office), she usually outsourced this work to firms specializing in the field.
3. Collaborations–This is tied to “patent generation” above. Think of a collaboration as two parties (it’s usually two and no more) getting together, with each bringing its own special resources. For Jenny’s employer, it could be imaging technology or even money. For the collaborator, it could be expertise, special characterization equipment or access to a user base. An important goal of a collaboration is for the two sides to work together to generate IP. This is why Jenny was often deeply involved in collaboration setup and maintenance.
4. Copyright and trademarks -- For Jenny, this area for Jenny was a lighter lift, but when it came up it was often urgent. She could go months without this ever being an issue, and then there would be a frantic phone call asking Jenny to help because, say, a brand name might be too similar to that of another company’s product. These eleventh-hour calls happened most frequently when a product was about to be introduced. Jenny needed to give her legal OK before a product could be marketed with a given brand name or logo.
5. Legal odds and ends -- Whenever there was a colleague in need of help, Jenny never said, "Not my problem". If anyone approached her with a legal issue, no matter what it was, she would either solve the problem herself or find the right owner. Topics that Jenny tackled included purchase orders, supplier management, negotiating confidential non-disclosure agreements and training engineers on IP and the invention disclosure process.
I should point out that Jenny rarely, if ever, saw the inside of a courtroom as a part of her job.
What were Jenny ‘s working hours?
Because of COVID, Jenny worked at home most of the time, meaning a blurry line between work and family. (She did go into work as business required, but this rarely meant more than twice per week and she usually got away with just one visit per week.) Throughout her corporate career, there was a strong tie with Europe. So, she usually checked her email at around six in the morning. Also, for many years she supported development in Korea, which in turn meant working after dinner. Jenny was an extraordinarily efficient attorney, however, so she still had plenty of time for her family.
What did Jenny enjoy most about her work?
Learning about the technology forming the basis of the IP portfolio falling within her scope. In general, Jenny loved to learn!
What did Jenny like least about her work?
Setting up and leading meetings only to have some of those who accepted the invitation not show up. Though a seemingly minor issue, this was a recurring pattern for 20 years where Jenny worked and proved to be a pebble in her shoe.
Why Jenny "Ko" instead of Jenny "Chow"?
For professional purposes, Jenny decided to keep the name with which she passed both the California Bar Exam and the Patent Bar Exam.
What does the “Esq.” mean at the end of her name?
Short for “Esquire”, it means she passed the Bar Exam. She normally didn’t use it–it wasn’t even in her signature block–but she did occasionally put the “Esq.” at the end of her name when she meant business in a formal letter.
What was it like for Jenny working for a German company?
For 20 years, Jenny worked for a German conglomerate and she was proud to be an employee. She enjoyed her annual trips to Bavaria and, as one big bonus, she got vacation time that was commensurate with an employee in Germany–six weeks per year. This included sick days, though. As mentioned above, her days often started early and there would be a batch of emails waiting for her when she woke up. For meetings, she usually drew the line at 7:00 am.
OK, so Jenny went to law school and passed the California Bar. Does that mean she didn’t have to take any training afterwards?
No. All attorneys practicing law have to be continuously trained. This is formalized by the Minimum Continuing Legal Education requirements set by the State Bar. Jenny needed to take 25 hours of training every three years. Jenny enjoyed it! She was fascinated by the legal world and was always curious about the latest changes to public policy and the reasoning behind them.
Did Jenny make a lasting impact in her role?
Yes! Here are a few examples:
1. As mentioned above, Jenny put together collaboration agreements, often called “joint development programs”, usually with universities. Before the parties work together, though, they have to agree beforehand on how any IP created in the collaboration will be handled. Maybe it means her employer owns the IP and offers a free license to its collaborator. Maybe it's the other way around. But, in any case, this is where Jenny came in. Because of her work in this field, collaborations she set up have been, and can be, generating IP for years to come, hence advancing fields such as medical imaging and the treatment of tumors.
2. Jenny negotiated a number of confidential non-disclosure agreements. These agreements permit employees of one corporation to share confidential information with those of another entity, hence enabling idea and data sharing. Such so-called “CNDAs” usually have no expiration date. So, Jenny’s impact here will be felt in perpetuity.
3. Time and time again, companies–usually smaller ones–have shown an interest in the patent portfolio of Jenny’s employer. Jenny, a creative deal-maker, would construct licensing arrangements that will last for years to come. Such contracts will produce a consistent and reliable revenue stream for her employer.
4. At the time of writing, Jenny constructed and put in place the reward structure at her employer that exists today for invention disclosures. This provides monetary rewards for inventors for each step from disclosure, to the patent committee deciding to file, to publication.
Did I miss any questions you have about Jenny and her work? Please let me know.
It’s remarkable that any single individual can have such a broad scope as described above and do so well at all aspects of her job. In my next post, I will describe the skills that Jenny possessed that made her such an outstanding attorney.
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