We spoke to Arne Lang, who heads the patent and compliance team at Essen-headquartered chemicals company Evonik, about patent strategies, recent innovations and what makes Evonik different.
Leaders League. Tell us a little about Evonik.
Arne Lang. Evonik is one of the world leaders in specialty chemicals. We’re active in over 100 countries around the world, and generated sales of €13.1 billion and an EBITDA-adjusted profit of €2.15 billion in 2019. About 47% of our sales are covered by patents. Evonik goes far beyond chemistry to create innovative, profitable and sustainable solutions for customers. More than 32,000 employees work together for a common purpose: we want to improve life, day by day.
What is the thinking behind Evonik’s patent strategy and policy?
We don’t have one IP strategy for Evonik. The IP experts advise Evonik business units and companies on all issues related to the protection of industrial property rights, technology transfer, IP strategy matters, and IP management. In a wider sense, in addition to patents, brands, and other property rights, IP also includes business and operating secrets and other expertise.
We aspire to support the units throughout the group and worldwide based on their respective IP strategies. Those strategies are derived from business and R&D strategies; they are tailored to the corresponding business units and vary by product line.
How would you define your role as the head of IP management?
The IP departments are part of the Legal, IP management and Compliance department. My department is responsible for all IP and patent issues concerning the Resource Efficiency segment of the Evonik group and for all trademark issues for Evonik worldwide.
IP management supports a business from the beginning of any project until the commercialization of the innovation and beyond. For us, IP management includes counselling and providing the business tools, for example search tools and internal and external databases for patents and trademarks. We have two more IP departments in Germany and further IP groups abroad, all of whose activities need to be coordinated.
How large is your team, and how is it organized?
My team comprises 20 IP managers, most of them qualified European patent or trademark attorneys or IP contract experts. The trademark team is part of the patent department and collaborates with the patent team, especially when we are dealing with M&A projects, as we must have a holistic view on IP.
“Soon there might not be a need for IP managers and back-office people to meet daily in an office”
With regards to daily work, the trademark team is in more regular contact with the marketing people, while the patent attorneys or IP managers are more in contact with technical or R&D people.
The group of internal mandates is little bit different. The ratio of patent work to trademarks is about 10 to 1. The Evonik group owns about 24,000 patents or patent applications and about 6,900 trademark applications or registrations. The Evonik group filed 225 priority patent applications in 2019 and was ranked 69th among the EPO [European Patent Office]’s top applicants in 2019.
What sets you apart from the competition?
Regarding patent work, our department is comparable to a full-service IP law firm in all fields of IP. The patent attorneys are responsible for all patent work concerning the business or technology they are responsible for. They counsel, draft, do opposition and prosecution proceedings entirely on their own. We try to do most of the IP work in-house. Only in exceptional cases or if we are required by law do we use law firms.
Do you cover other IP besides patents and trademarks in your department?
We have experts dealing with domain registrations and internet monitoring regarding trademark and patent infringement. We have several colleagues who are responsible for information gathering, and who have expertise in searching patent and business databases.
What’s your relationship with the R&D department?
Each of our IP managers is responsible for a business line or technology. Those colleagues have regular meetings with the R&D team to make the most of the innovations or inventions produced by the R&D department.
How much does Evonik invest in R&D?
In 2019, Evonik invested €428 million in R&D.
What recent innovations are you most proud of?
We’ve in-sourced some of our IP work in recent years to reduce our external spend. We also started to migrate our paper files to a fully electronic IP management system in 2005, a system that has worked excellently for years. IP departments might look very different in the near future, because there might not be the need for IP managers and back-office people to meet every day in an office setting. This is something we are actively considering.
We also pay attention to what is happening in the field of AI and automated text drafting. While contract drafting tools are already available, I personally expect functioning patent drafting tools supported by AI to hit the market in the next five years. After manually drafting a set of claims, it should be possible for a software to prepare a description that complies with formal patent office rules.
There are many more fields where AI will support IP work in the future, especially in the analysis of large amounts of data. I am thinking, for example, of analysis related to prior art searches, trademark and patent searches and IP (risk) monitoring. We bought and developed some tools that already feature AI to help us to do this work.
Recently, Evonik introduced the first digital lab assistance service, COATINO –- a voice controlled, multi channel platform enabling fast and easy access to Evonik’s coating additives solutions. This is a digital assistant that potentially puts an end to what have been time-consuming and frustrating processes. Coating developers tell COATINO what properties they want to have and are provided suitable answers. For this type of project, we file trademark applications but also patents. There is a strong demand for new business models and computer-implemented invention, so we’ve had to develop expertise in this field, but we are well on our way.
What challenges will your department face in the few years years?
We expect more and more innovations and inventions involving new business models, computer technology and AI. Therefore, we need to further develop our toolbox to get the best protection for Evonik’s know-how, inventions and innovations in these fields. It is not only patent and trademark work but all aspects of IP protection, including trade secrets, copyrights, etc.
The people within Evonik also need to recognize the patent department as a comprehensive IP management department.
We are also expecting to see increasing use of IP design methods to support new business models. Starting from the features customers expect from an Evonik innovation, we need to define the best way of IP protection for those features.