Eric LaMothe shares his thoughts on how to manage an entire region’s patent portfolio effectively
Could you tell us a little bit more about your role?
“I’m a patent manager here at GKN Driveline, so I manage the portfolio of the region that I reside in, and I have two other counterparts in both Europe and Japan that do the same thing. I’m responsible for reviewing and conducting patentability assessments on all the new inventions that come through this region, then I’m responsible for managing the patent families that result from those new inventions.
“I’ve been in this role now for about three and a half years. I started back in 2001 as a designer here at GKN, and then progressed into a design engineer. I was in development for a long time so I basically spent the better part of 14 years doing design engineering and development work. This also included coming up with my own inventions, as I have a few of patents of my own. This background is what sparked my interest into what I’m doing now.
“Being at GKN for so long and working in this technology field, I have a good feel for the technology that I’m working with, which allows me to assess things from a patentability standpoint fairly easily. This role allows me to interact and communicate with the different engineering teams and understand what they’re really developing.”
What are some of your main objectives at GKN right now?
“My main objective in the role I’m in is to assess new invention disclosures that are submitted.
“I don’t have specific projects per se that I work on, instead I have several different new invention disclosures that I’m continually juggling. I also have a portfolio of over 100 active patent families that I’m maintaining at any given time, and I’m also involved in multiple IP related investigations.
“At GKN, our IP group runs lean. We as Patent Managers manage our respective regions, whatever comes out of that region, we look after. It all lumps together, and it keeps us busy.
“We function as a close group and we all work together really well. Not only do I know what’s going on within my region, but I have communications with the other regions as well. I think it’s important to have that close group when you’re working on very similar technologies, because if something is being developed in one region, you must communicate and understand what they’re doing in case someone is doing a similar thing in another region.”
What are some of the typical challenges you’ve noticed within your industry?
“The biggest challenge in my job is to sort through the enormous amounts of data that exists in the public domain, because new documents are continuously publishing all over the world.
“I have to be able to understand what the invention is to be able to assess it, and then find out if anybody else in the world has already disclosed something like it. It’s all about trying to find the “needle in the haystack” of all the publications.
“I also have to evaluate current products to make sure we’re in a clear standpoint and we don’t have any issues. When you’re sorting through all that data, you must have a good knowledge of the existing product portfolio as well as know what your other regions are doing. You also have to understand the company strategy, to be able to assess the commercial potential of the new inventions.
“That’s where the PatSnap tool comes into play. I rely on it daily to help me assess the things that I need to go through and sort through the large amount of data. I’ve become very efficient with the tool so that I don’t have to think about how to use it, I can focus on my other tasks.”
How have you used PatSnap to help address some of your challenges?
“I use PatSnap for day-to-day searching, looking up patents/publications and reviewing documents. I conduct regular patentability assessments for new inventions and generate patent landscapes, which I also use in a non-typical manner for advanced searching. This allows me to narrow down many documents within a data set when keyword searching is inadequate.
“The PatSnap Insights tool is used to generate company and technology reports. These are used for benchmarking analyses to compare companies within the same technology space as GKN. The workspace functionality is used to collect lists of patents/publications related to investigations that I’m working on or technology areas of interest. This functionality also allows me to work collaboratively with my team members.
“I utilize the name grouping functionality as a precursor to generating company reports within Insights, and to aid in searching common assignees in the analytics tool. The alert functionality is used to set up reoccurring notifications of competitor publications and key technology areas.
“PatSnap is an easy to use tool that aids me in conducting my job responsibilities daily, which thereby allows me to achieve my role objectives. The tool allows me to sort through larger amounts of data ensuring enough ground has been covered to establish a good assessment. This strengthens the confidence of my assessment in the likelihood of GKN obtaining good patent protection.”
Are there personal drivers behind what you’re doing? Why is this so important for you?
“This is a good question and I’ve thought about this for quite some time, especially when I made the move to the role I’m in now.
“I never knew an individual with only an engineering degree could manage a patent portfolio, I thought you had to be an attorney and have a law degree, a common misconception I think. It wasn’t until having a conversation with a colleague trying to fill the role that I found out I was qualified. I then asked myself, could I do that? I determined that I could, and that I’d be interested in it and the rest is history.
“I like this role because it’s challenging. You’re still on the forefront of engineering development, but now you’re part of the strategy discussions a bit more, so I like that aspect of things. You also get to see how the legal and engineering sides are coupled together.
“In this type of role, you’re not only a designer or an engineer, but you can be involved in a different aspect of engineering. You get to discuss strategy, and talk about the company portfolio and technology. You get to understand where the company wants to go and see that vision of what they intend, then help them get there by protecting them with an IP portfolio that matches their vision.”