Lisa Schroeder and Suzanne Flaton-Origenes – BASF
But in an increasingly digital world, chemists may not appreciate opportunities to secure patent protection in the digital space. This being a rather nascent area, Schroeder aids their cause as associate general counsel of intellectual property for the North American division of German-headquartered chemical giant BASF.
“More and more, we are seeing valuable digital-use cases for chemical inventions,” she says. “If we fail to protect the digital side of BASF’s innovations, we miss out on an entire segment of the value chain.”
Examples of BASF’s digital-use cases are many. An online platform predicts pharmaceutical formulations meeting user-defined criteria. A web-based application lets customers find raw material for architectural coatings. Then there are digital solutions for agricultural uses that include monitoring soil and crops, identifying pests and treating field conditions.
So how does one go about raising the digital IP IQ at BASF?
“It has been a carefully planned, multi-faceted approach,” says Suzanne Flaton-Origenes, vice president and head of BASF’s North American IP division. “We’ve had to create more awareness by our clients about what constitutes a digital invention.”
In the last year, the team has prioritized training and counseling to clients with digitalization part of every conversation. The legal team endorses “invention harvesting workshops” for digital inventions. Such workshops extract ideas and IP from the business and research teams while the lawyers advise and steer. A recent workshop for one of Schroeder’s clients produced seven ideas for patent filings with more expected.
“Technology evolves so quickly so we need to drive this in real time,” Schroeder says. “We’re not just passively receiving ideas. We’re helping to steer IP strategy to ensure alignment with commercial strategy.”
The effort doesn’t end with increased client training. BASF’s lawyers also need what Schroeder refers to as “upskilling.”
That’s because while patent lawyers have the technical background to speak in the tongues of the inventors they represent, BASF’s patent lawyers tend to be schooled in chemistry or biology and not computer science, which she says might be the fastest evolving discipline.
“Understanding and patenting the complex computer implemented methods our clients are developing requires a completely different skill set,” Schroeder notes. “Patent practice for digital inventions is governed by a unique and rapidly evolving body of case law. We have to keep pace with our clients.”
To foster attorney upskilling, BASF’s North American IP team designed a digital training bootcamp last year in Raleigh, North Carolina, where most of the team is based. External and internal digital experts shared best practices and help pave BASF’s new “digital project roadmap” for tracking projects in the United States and Canada.
“We’re all learning as we go,” says Flaton-Origenes from BASF’s offices in Florham Park, New Jersey. “This process helps ensure that we capture all experiences to maximize and accelerate the entire team’s learning.”
Flaton-Origenes says she and those under her wing are well positioned for this task, thanks to the vision of Alissa Zeller, the German-based senior vice president for global IP.
The North American responsibilities have been simplified in part by an IP management database, Anaqua, that holds BASF’s patents, trademarks, contracts and related matters. Though the initiative came from Germany, it’s achieved a relatively high level of user acceptance within the North American client base – no small task for a highly matrixed company.
“Anything that I’m working on is going to be in this database and therefore accessible by my colleagues,” Schroeder says. “They get secure access to all kinds of data, enabling easy collaboration.”
Another aspect of Anaqua is its contract request submission process that delegates standard tasks to a legal team in Uruguay under the direct supervision of U.S. and Canadian lawyers. And why Uruguay?
As Schroeder explains, “it’s a stable country with an educated workforce and where BASF maintains a shared service center.”
One year into this process, Schroeder says the Uruguayans are handling 90 percent of IP-related non-disclosure agreements for North America and 75 percent of other standard IP agreements with additional assignments enroute. Meanwhile the North American IP team focuses on more complex, higher-risk matters.
Varied paths to IP career
A registered patent attorney herself, Schroeder can empathize with those in the labs. She logged three years as a technician between graduating with a biology degree from the University of Kansas in 2000 and enrolling at Boston University School of Law in 2004.
“Lab life takes an immense amount of patience—patience that I didn’t always possess,” Schroeder remarks with a laugh while recalling her undergraduate honors project that sought to fathom the genetics of fruit fly muscle development.
From that effort came inconclusive results. But the experience was worthwhile, helping qualify Schroeder for patent law and its more immediate results. She honed her skills from 2007 to 2012 as an associate with Lowenstein Sandler before going in-house with Mindray North America for the next three years. She joined BASF as an IP counsel in 2015 shortly after her son was born and was promoted to her current role two years later.
But while Schroeder and the rest of the North American IP legal team oversee patent law, they still needed a capable leader. That’s where Flaton-Origenes has come in.
An art history undergrad at Ramapo College, Flaton-Origenes lacks Schroeder’s scientific background but after graduating Seton Hall University School of Law, she worked in-house for pharmaceutical and life sciences companies. In these roles, she developed expertise in complex transactions, specializing in licensing.
Flaton-Origenes continued as a commercial lawyer at BASF when it acquired the global agricultural products business of her former employer in 2000. From 2015 to 2016, she combined her role as the leader of the largest commercial attorney team in BASF’s legal department with co-teaching IP transactions at Indiana University’s Maurer School of Law in Bloomington.
“She brought to the table a higher-level vision for our department and bridge-building with our colleagues in Germany,” Schroeder says. “That more than makes up for Suzanne not being a patent attorney.”
For her part, Flaton-Origenes appreciates what Schroeder and the rest of the North American IP department leadership have brought to the table. Borrowing the title of a Tina Turner song, she says they’re “simply the best.”
View this feature in the Vanguard Spring I 2023 Edition here.
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