Intellectual Property

Leadership Drives Diversity and Innovation

Christine McCarthy, leader of the patent group in Barnes & Thornburg’s IP department, talks leadership, diversity and managing "innovation on the fly."

CCBJ: What drew you to your current role at Barnes & Thornburg?

Christine McCarthy: That’s an interesting question. I’ve been with Barnes & Thornburg for 15 years, and last year I was asked to lead our patent practice. So until now I was basically riding the bus, but now I’m driving it. I’m fortunate to have a bunch of other experienced people, good decision-makers all, who were driving the bus before me and who are driving alongside me. But there is a big difference between learning by watching and learning by doing; this is particularly true in leadership. Still, I decided to take the position because I knew that I could make our practice even better than it already is based on my particular perspective.

We’ve been progressing for years—from a diversity standpoint, from a technology standpoint and from an innovation management standpoint—ever since I joined the firm, but we’re now in a position where we can shift and pivot in ways that move us into next levels.

How would you describe your leadership style?

I try to listen more than talk, but I am very direct and will ask hard questions. I don’t think leaders should be afraid to ask “why.” When I ask hard questions, oftentimes I’m not sure whether I’m going to get a single answer or multiple answers, but the whole goal is to drive dialogue from diverse perspectives so that the ultimate answer is fully informed. That is the real value of such discourse. That approach is very rarely easy and, as a result, somewhat unusual, but it drives the correct answers rather then what seem like the easy ones. We are living in a 24/7 world; a world in which most people don’t have the luxury of talking around certain subjects. But I believe that when people are honest with themselves and with each other, you can get a ton more done.

Who or what has influenced your leadership style?

That’s a hard question with an easy answer. I’d have to say my both of my parents. My mother was an accountant. My dad was a rocket scientist. Seriously. And they were Depression-era babies. So everything in my upbringing was about understanding the effects of what you do, and maximizing the benefit for both yourself and those around you. I was taught to “eat your own cooking,” so to speak—make sure that you’re doing what you’re supposed to do and don’t have two sets of rules, one for you and one for other people. That leadership style pervades my entire life, both professionally and personally.

I want those around me to be able to put hard questions to me when they think I’m stepping off the right path. When someone questions your decision-making in a direct manner, it’s an opportunity to make the team better by reaching mutual conclusions through dialogue.

Regarding protection of IP assets, what’s keeping your clients up at night?

I need to take this in parts. First, there’s the, shall we say, “dynamic” global economic situation. Having been in a pandemic for two years has forced our teams, and our clients’ teams, to be separated from one another, both physically, obviously, but also in an emotional and an intellectual sense. That is something that has to be managed. We have had to learn how to adjust our interactions so that people are able to collaborate and invent together when they are physically separated from one another.

Second, supply chain disruptions have forced “innovation on the fly,” meaning our clients’ brightest engineers are sidelined finding short-term workable solutions for short-term scarcity rather than focusing on industry-shifting invention development. Still further, there is the shift of workflows resulting from going paperless when, for example, patent (and IP law in general) is a fairly paper-intensive specialty area. Oftentimes people are printing out documents and spreading them all over a large table so they can understand theoretically difficult technical concepts. Historically, (in the not so distant past) all of those documents would end up in physical files that were handed from person to person as an indication of who was responsible for the next action for the matter.

But when you’re all working from home, with no paper files being handed around, processes have to change to enable people to understand whether they have the ball or somebody else does. You can appreciate that’s a big issue when you have large corporations with people all over the world. Then there’s the increasing amount of geopolitical unrest right now. Our clients are trying to determine how events in Eastern Europe are going to affect their supply chains, as well as their employees and their families.

I bring that up because patents are one of those things that are specific to a particular country or group of countries. For instance, if you’re a semiconductor manufacturer and you want to file patent applications in a country where chips will be manufactured, you must stay informed on the present state of affairs in Asia, for instance, as well as consider whether Asia will continue to be the focus for semiconductor manufacturing over the next 20 years. There is much to keep us all up at night, but identifying the short-term and long-term variables enables management and analysis to push forward and identify plans and goals.

Talk to us about some of the trends you’re seeing in patent applications. What industries have been filing the most patents in recent months or years?

There is an ever-growing amount of patent applications in data-related inventions. In particular, information transfer and management. As businesses and markets have globalized, much more data needs to be managed, analyzed, stored and inventoried to operate within and optimize supply chains so that we can understand and view trends. So there’s a lot of information management-related technology out there these days including data analytics using artificial intelligence (AI). Additive manufacturing technologies also continue to ramp up; that is one area of technology that enables large shifts in how businesses can operate to provide highly customized end products. It is also a particularly disruptive technology for historical market supply chains.

And, of course, given that people have their phones and other mobile devices on them at all times, mobile technologies have become increasingly interesting. There’s a lot of technology underlying the communication that occurs with a customer regarding how they handle their money, order food (or any number of things) online, track their health metrics, interact with transportation, and the like. There’s great deal of innovation in all of those spaces. Then there are the cutting-edge technologies, such as autonomous driving and electrification of vehicles, and the heavily patented areas like pharmaceuticals.

We’ve noted that the US Patent and Trademark Office is becoming more stringent in the way it wants to see disclosure of materials provided. In the USPTO system, you have to disclose the best mode of an invention in return for your limited monopoly rights; however, sometimes people will try to hold back certain confidential information that they don’t consider to be central to the best mode but may still be technically or commercially valuable. That is a strategically challenging and risky analysis but can be useful. Previously, with software-implemented inventions, it was not uncommon for practitioners to not submit actual software code. But the USPTO and U.S. federal courts continue to be more and more stringent when analyzing what we call the invention enablement requirement; so, we are now looking to actually disclose kernels of code that provide a particular implementation of an inventive step to ensure that aspect of the invention is disclosed sufficiently so that one of ordinary skill in the art could practice the invention.

With regard to prosecution—the actual examination of a patent application at the USPTO—like the rest of us, all of the examiners have been working remotely during the pandemic. For some of them, it has really improved their throughput, based on the numbers of patent applications they’re examining and the response times. Many examiners have become much more efficient and direct in their communication with us, which obviously I really appreciate. Other examiners have remained at the levels that they were at, and some, unfortunately, seem to be really struggling. I suppose that’s not a surprise; we’ve all been affected by the pandemic, but in some surprisingly different ways.

Are there certain USPTO actions that are hindering patent protections for your clients?

I think that the USPTO is doing a really good job of managing their personnel to move through the amount of patent applications that are being filed, resulting in good quality patents. There are some changes that we’ve noticed during the pandemic that maybe aren’t a result of it, but have just happened in the past two years. We’re seeing a rise in more formalistic objections and more format rejections that would not have made it in office actions in the past. But the art rejections are very good, and the quality has been very good. Also, the USPTO examiners have become much more comfortable communicating via phone and email than they were before everyone began working remotely. That’s a welcome improvement.

What changes would you like to see within the legal profession?

As an industry, I’d like us to more effectively implement the diversification paradigm that we all say we’re doing already. We are not doing a good enough job. The profession is a lot more diverse than it was when I entered it 25 years ago, but it still has a ways to go. I’m very fortunate that Barnes & Thornburg’s office in Washington, D.C., where I practice, is very diverse. But we’ve worked really hard to achieve that. We don’t view it as a profile. We view it as a choice identifying our team with whom we want to practice law. Sure, there is an external impact but, for us, it’s about maximizing the benefit for each other and our clients.

Maintaining dialogue in a diverse team requires purposeful engagement. We actively search out subjects that will lead to awkward conversations and ultimately, meetings of the mind. That effort enables a better understanding of each other, regardless of what we look like, or our gender or sexual orientation, or our religion. We actively seek out those discussions. But I think that there is a big chunk of the legal profession that says, “Well, it’s enough that we all look a little different now.” And then there are those who say, “Well, we’re tolerant.” But tolerance is too low a bar. True engagement and optimal team building can only happen when people feel seen and respected and comfortable sharing their diverse viewpoints. It’s not enough that we look different, or that we look different on paper. It’s about providing different viewpoints that can be shared with other people on the team, and listened to, to make the work product better. I don’t think the profession does a good enough job with that. It’s hard. Don’t get me wrong. It’s really easy to run a meeting when only one person says anything…but why wouldn’t that just be an email? It’s much more challenging to run a meeting where people feel comfortable pushing back on lots of things. But at the end of the day, what you get out of that meeting is a much better work product. I think we should struggle to make it a better work product, even if the meeting is hard.

So share with us—I don’t like to say the best, but the highest-impact—career advice you’ve received.

That actually is from my rocket-scientist father. I was in college and said to him, “I don’t know how many people are going to be in this program and, you know, how do I stand out?” He replied, “Well, you know, there’s always room at the top.” So, in essence, his advice was to just find something really hard to do that you like and other people don’t; do it well and you’ll always have a spot. Eventually the more you work on it, you’ll just keep moving up in the ranks until you get to a point when you’re the person asked to drive the bus.

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