FOR NEARLY A QUARTER OF A DECADE, INTERNATIONAL BUSINESS
Machines Corp. has led the nation with the number of U.S.
patents earned. Last year, with 8,088 earned patents, IBM
became the first company to receive more than 8,000 U.S.
patents in a single year and also marked the 24th consecutive
year the company has topped the list of U.S. patent recipients.
Behind the numbers is IBM’s intellectual property team of
more than 100 lawyers. These lawyers are tasked with managing intellectual property portfolios for the Armonk, New
York-headquartered company and generating income from
IP, which in 2016, came to more than a cool $1.6 billion. They
are also actively engaging in advancing IP policy matters.
It’s certainly no easy task. But with more than two decades
as a leader in the IP space, you’d expect nothing less than seasoned experts who have managing intellectual property portfolios down to a science. Even when talking about IBM’s tens
of thousands of patents and hundreds of trademarks, IBM’s
intellectual property team doesn’t disappoint.
Years of experience have resulted in a patenting process that
runs like a “machine,” says Mark Ringes, vice president and
assistant general counsel at IBM, who leads the IP team. “The
whole patenting process is almost a factory-like structure in
that we set filing targets by business unit every year,” he says.
The team works closely with the business side and gets weekly
updates on the number of patents that have been issued from
the U.S. Patent and Trademark Office, he says, “so it’s a very,
very carefully managed process throughout the organization.”
This sophistication also colors the way the IP team
approaches litigation, says John Desmarais, founding part-
ner in the New York City-based firm Desmarais LLP, who
works as outside counsel on IP matters for IBM. More than
five years ago, in 2010, IBM and a number of other compa-
nies were sued together for patent infringement, Desmarais
recalls. It became evident, he says, that it would be compli-
cated to coordinate with all the defendants to come up with a
unified strategy, so IBM volunteered to go first as the test case.
And it paid off. IBM’s motion for summary judgment of
noninfringement was granted. Meanwhile, the rest of the
defendants faced a very different scenario, Desmarais says.
“It was a very risky thing to do,” he explains. “And I don’t
know that a lot of clients would’ve done that … whereas IBM
said: ‘No, we’re sophisticated enough and sharp enough that
we can go first and we can protect ourselves.’”
IBM now has its sights on a 25th year leading the United
States in patents, which means Ringes and his team are
already looking forward with that goal in mind.
They are also actively engaged in intellectual property
policy matters. For instance, there are a number of issues
BY JENNIFER WILLIAMS-ALVAREZ
NEW IDEAS AND EMBRACING CHANGE DRIVES IBM’S LEGAL DEPARTMENT’S SUCCESS
BEST LEGAL DEPARTMENTS 2017