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Clause 8: IBM's Chief Patent Counsel for Americas Mark Vallone on Changing Patent Portfolio Strategy

Clause 8: IBM's Chief Patent Counsel for Americas Mark Vallone on Changing Patent Portfolio Strategy

Following patent giants and no longer pursuing goal of “numeric patent leadership”

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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Voice of IP
Clause 8
The podcast listened to by sophisticated in-house counsel, judges from around the world, IP policymakers, senior USPTO officials, and top patent dealmakers and attorneys to stay ahead of the curve by understanding the personalities and forces shaping IP.
Eli Mazour’s love of talking to people – along with his belief in the importance of America’s patent system – led him to start Clause 8. Clause 8 features conversations that provide strategic insights about how to best deal with various patent-related issues. Some of the previous guests include America’s great innovators, federal judges, USPTO Directors, top IP staffers on Capitol Hill, and Carole Baskin’s attorney from the documentary Tiger King.
It's the #1 podcast about IP and is in the top 2.5% of all podcasts according to Listen Score. The podcast has been covered and cited in many publications, including Bloomberg, Law360, Courthouse News Service, Above the Law, IAM, and Original Jurisdiction.