Innovation Junkies Podcast

Angela Grayson on Intellectual Property & Innovation

The Jeff talk with Angela Grayson, founder and CEO of Precipice IP. Don’t miss this episode as they dig into: trade offs between protecting the software source code & patenting it, common elements of clients who patent to innovate, & what defines “inventorship” & the right to be listed on a patent.

Jeff Standridge: This is Jeff Standridge and this is the Innovation Junkies podcast. If you want to drastically improve your business, learn proven growth strategy and generate sustained results for your organization, you’ve come to the right place. Over the next half hour, we’re going to be sharing specific strategies, tactics and tips that you can use to grow your business no matter the size, no matter the industry, no matter the geography. We’ll be talking about everything from sales and marketing to organizational, operational and leadership effectiveness to innovation, digital transformation and everything in between. Weekly, we’ll bring in a top mover and shaker. Someone who’s done something unbelievable with his or her business and we’ll dig deep. We’ll uncover the specific strategies, tactics, and tools they’ve used to help you achieve your business goals. Welcome to the Innovation Junkies podcast.

Hey guys, if you’re looking to put your business on the fast track to achieving sustained strategic growth, this episode is sponsored by the team at Innovation Junkie. To learn more about our strategic growth diagnostic, go to innovationjunkie.com/diagnostic. Now let’s get on with the show.

Jeff Standridge: Hi guys, welcome to the Innovation Junkie podcast. I’m Jeff Standridge.

Jeff Amerine: And this is Jeff Amerine.

Jeff Standridge: We’re the Jeffs.

Jeff Amerine: I think they might’ve figured that out.

Jeff Standridge: Yeah, I guess you’re right, probably. All right, we’re excited to have you with us today. We’ve got a great episode and a fantastic guest. Jeff why don’t you do the honors?

Jeff Amerine: Absolutely, so we’re really fortunate pleased to have a good friend, colleague, a great member of the innovation ecosystem in Northwest Arkansas here today, Angela Grayson. She is an accomplished intellectual property attorney, speaker and author. She’s the founder of Precipice IP. Precipice helps entrepreneurs and technology focused businesses protect their products, their brands, their designs and data. Prior to founding Precipice Angela was the associate general counsel intellectual property and patent operations lead at Walmart stores incorporated. Before joining Walmart, she served as in-house patent counsel for several multinational companies. Just a wonderful person, she’s been a significant add to the innovation entrepreneurial ecosystem in Northwest Arkansas. So pleased to have Angela on with us today.

Angela Grayson: Hi guys.

Jeff Amerine: Hey, welcome.

Angela Grayson: Thank you and-

Jeff Standridge: Glad to have you with us.

Angela Grayson: …to have my book.

Jeff Standridge: Oh wow.

Jeff Amerine: Now that’s some product placement right there.

Angela Grayson: It is.

Jeff Standridge: Checks on the way, checks in the mail. It is so great to have you with us Angela and even the work you’re doing up in Northwest Arkansas, we’ve had the pleasure of having you help us here in central Arkansas as well and across the state. Thanks for taking some time to be with us on the Innovation Junkies podcast.

Angela Grayson: I love it, love to be here.

Jeff Standridge: We like to start by being not so serious. We like to have a random using at the start of each of our podcasts, when we remember to do it. Jeff’s in my age, sometimes that’s a challenge to remember to do it. Today we’re going to be talking about our favorite personal pastimes. You want to go first?

Angela Grayson: You want me…?

Jeff Standridge: Please.

Jeff Amerine: Take the pressure off.

Angela Grayson: I have quite a few hobbies I have to say. Everybody knows my newly discovered love of chickens. I’ve got a small flock of chickens. I’m just completely amazed that these ladies give me breakfast. Every time I go and gather my eggs, I’m like, “Wow, this is so cool.” Probably my favorite pastime is gardening.

Jeff Standridge: Okay, when you said everyone knows of your favorite pastime, I thought you were going to say bees.

Angela Grayson: Well that’s a new pastime. Again, I have so many. Sailing, bees… being in Northwest Arkansas I can do all of those things with great ease but that’s absolutely true. I think for me all of the things that I love to do when I’m not practicing law is really science in action. Sailing is all about physics, the chicken is chemistry to me, the bees, the gardening, all of this is like a science experiment in real life. I just get so excited about my hobbies but that’s just me. I’m a nerd for sure.

Jeff Standridge: Very cool. How about you, Jeff?

Jeff Amerine: You’re going to put it on me. Favorite pastime, wow. Similar thing, recently we’ve grown a little bit of a herd or a flock of pygmy goats and sheep actually. Recently I found a lot of peace in… I don’t know, it’s just cool to be able to stand out in the back and look on the down slope part of our property and seeing them out there doing what they do. That’s been fun but I would say in general, I love trail running. I really like getting out on the trails and I don’t get to do it near enough but that’s where it clears my head and I have a lot of clarity of thought and really find peace in doing that as well.

Jeff Standridge: I was a little worried about Jeff. I called him the other day and I asked him if the goat farming was going okay and he said meeeh. My favorite pastime is dad jokes obviously.

Jeff Amerine: We have a slight channel, just for him for dad jokes.

Jeff Standridge: There you go, that’s right. I have a couple. My individual favorite pastime, individual and group is cycling, which is just a new pastime here that I picked up in the last two or three years. I really, really enjoy being on my bike and getting up early on a Saturday morning and doing a long ride with a couple of three friends and watching the sun come up and that’s a great pastime. The other one is family time, just hanging out with my family at the lake usually and on a pontoon or just there in the house, on a ATV doing whatever. Recently I’ve gotten into, I call it farming. It’s really farming for wildlife. We consume quite a bit of wildlife during the year, mostly venison. I have a farm that I’ve begun farming it for deer and turkey. I got a little tractor therapy a couple of weekends ago, hopefully get a little tractor therapy tomorrow and so similar to you Angela, most of my pastimes are outdoors as well.

Jeff Amerine: This is a place that you can do it, which is so amazing.

Jeff Standridge: Yeah, let’s shift gears maybe and talk about innovation. Angela, tell us a little bit about your backstory. We got a little bit of it in the bio but how you decided to get into the space of intellectual property protection, really for newer and startup firms and newer innovations. I know you did some work with Walmart and larger enterprise but how did you choose to decide to go out on your own and work in the space?

Angela Grayson: Great question. I have been in larger multi national corporations most of my career. I started out at the Penn and Trademark office as a patent examiner years ago. My first attorney job was actually at a pharmaceutical company drafting patent applications and counseling research and development scientists in the drug discovery space. From that first job all the way to my time at Walmart [inaudible 00:08:23] and I’ve enjoyed that a lot. I’ve had amazing opportunities to be a part of some very large deals throughout the years for different companies. It definitely is satisfying, I always told my VPs whenever I would change jobs I want to make sure I’m not sitting at the kiddie table when I come to your company. A lot of what drives large companies is run and maintain innovation.
Many large companies are really not looking to get involved with disruptive technology. They’re really looking for figuring out what their customers want and making improvements in incremental mental advancements. That’s well and good, I just wanted to do something different. I wanted to be a part of more of a disruptive ecosystem. I wanted to help counsel businesses where the intellectual property was really a central and keystone to the organization. It’s very satisfying knowing that you’re helping a company build something hopefully great. That’s really the reason, it was just time to shift into a different mindset.

Jeff Standridge: Most of your clients today make up… Give us an… you don’t have to call names unless you’re comfortable in that but in terms of the types of companies that you find yourself working with most.

Angela Grayson: It’s probably… this is actually something I absolutely love. There’s really not a majority. I end up working with a number of medical device companies, I work with some CPG companies, I work with some services organizations. I have some federal work as well in the space area. I personally love the fact that I have such a diverse mix of projects. There’s also a nice brand component to some of that work as well so it’s not just patent related it’s also trademark work as well. It’s across the board but maybe primarily in the pharma space, the medical device space. I’m working on a software related innovation right now. It’s in those buckets.

Jeff Standridge: Let’s take that software innovation. We have a lot of tech folks that we work with and that we have as listeners. How do you advise a software developer in the forms of intellectual property protection that they need to pursue based upon whatever it is that they’ve developed?

Angela Grayson: Well, what you want to do is look at what they’ve developed with a really broad stroke. I don’t necessarily advocate only focusing on patents and usually when people intellectual property, that’s the first thing they think about. You don’t necessarily need patents to have a successful, strong business but there may be some instances where you do need that. In particular if you’re looking to obtain investors, if you’re looking to sell your company.
In those instances looking down the road, it does become important to think about patents. I think with any software related enterprise which you want to look at is what are the innovative elements of what you’re doing. Sometimes the system is what’s innovative, sometimes it’s the user interface that’s what’s innovative. You really want to get at what is special about this and figuring out if there’s a way to protect that competitive advantage with regard to that special aspect of the innovation. The software space right now, oh, sorry go ahead Jeff.

Jeff Amerine: No, I was just going to say as a followup, forgive me for that but as a follow-up, how often do you feel there’s a trade off between protecting the source code as a trade secret, maybe copyright protection versus patenting because of some of the issues associated with filing patents when you do software. What are your thoughts around those trade-offs?

Angela Grayson: Well the biggest… I’ll tell you, I like to press my clients around thinking about that in terms of the system. Unfortunately, there’s an issue around patent eligibility when it comes to certain software [inaudible 00:13:21] innovations and you want to have a software claim. It’s always nice to also think about what the system is. What are the hardware and software components that make this work. In innovation can be protected any number of ways. Just because you’ve invented something doesn’t mean you only have to look at it through one lens. Generally there are multiple levels of innovation and multiple types of innovation.
Quite frankly, the law is really unsettled when it comes to software innovation. Reframing the innovation in terms of patents subject matter that the USPTO responds to in a favorable way is good. By the way, protecting code and pursuing a patent are not mutually exclusive things, you can actually do both. You want to make sure that you’re protecting the innovation in the right way that’s not going to cost you an arm and leg because the office is resistant to that approach. That’s really the art and science of it all.

Jeff Amerine: That’s great.

Angela Grayson: Yeah.

Jeff Standridge: You work with a number of companies and we do as well a lot of mid-sized companies. How would you advise a senior executive of a mid-size company to really, maybe they have a new innovation, they’re not really sure whether it’s patentable or not. It could be a new device or a new product or a new process or what have you. How would you advise them in terms of the things they need to be looking for relative to their disruptive innovation or what they think is a disruptive innovation. The things they need to be looking for in terms of protecting that IP, maybe outside the software realm.

Angela Grayson: Yeah, sure, so probably figuring out what’s important to your customer. When I’ve worked in house, one of the companies I worked with, their innovation was really driven by what customers were asking for because they were an OEM. The customer will tell you what they want. I need a formulation that solves this problem. You want to think about okay, you’ve got the problem solved but what are some of the other ways that this innovation can be used? What are some of the other applications is formulation? It’s like you want to take the central core of why you have this innovation and think about some of the other applications. In terms of the cost benefit and I think it’s important. A lot of times larger companies don’t necessarily do this as much as small and mid-sized companies should do this.
I do think it’s always important to think about the cost benefit. Because if we’re talking about establishing a patent portfolio… Okay, checking the box that whatever the innovation is important to your customers is good. Checking the box about how can this innovation respond to an extension and a product line. Those are the different applications I was talking about. Flex Seal is a great example of you have a formulation that can be used as a spray, can be used as a tape, it can be used as all sorts of things. There’s also the cost benefit of, these are legal expenses and legal costs.
If you’re going to pursue, for example, filing patents. In particular, when you file an intellectual property outside the United States, you may even double or triple your costs. In some countries you’ve got to pay maintenance fees for your application just to pend. You’ve got to pay two sets of attorney’s fees and on and on and on. I think that’s probably the way I would steer the client understanding what’s important to the customer, what product line extensions might you be looking at and what’s the cost benefit of incurring the cost to protect the innovation.

Jeff Standridge: Hey folks, we’ll be right back with the episode but first we want to tell you about a limited opportunity to take advantage of our strategic growth diagnostic. For a short time, we’re offering a free strategy call to see whether or not our unique diagnostic tool is right for you. Go to innovationjunkie.com\diagnostic to learn more.

Jeff Amerine: When you think about, again without naming names, because obviously you can’t do that. When you think about seeing client companies that are doing innovation particularly well. What are some common elements that lead the clients to Excel at that. To be very innovative but not just innovative for the sake of creating a patent portfolio but really moving things to market efficiently. What do you think some common tenets of that are?

Angela Grayson: I think these days, probably the biggest thing is partnering with the right company. People are always looking to reach across a demographic. People are always looking to go into new markets and sometimes going into a new market doesn’t necessarily mean that you need to develop something that’s totally brand new. It might mean you want to introduce your product to a whole new, different country or a whole new different category. I personally have seen where companies are really doing well by reaching out and partnering with the right company to bring products and services to market. Open innovation is it right now.
I remember maybe 10 or so years ago, open innovation wasn’t as widely accepted as it is now. It’s really just about finding strategic alliances, finding strategic partnerships to really open up another market or open up another category for your product or service. It’s always interesting. You really do not need to necessarily spend a ton of money on new product development, although a lot of companies do. There’s always the what’s next, what’s next mentality. Sometimes it really is as simple as collaborating with the right company or the right individual.

Jeff Standridge: If we maybe take a moment and go back to square one. We talked a little bit about you. Tell us a little more about your practice. The reason I say your practice in Precipice IP you’re very transparent in terms of what the costs are for folks to engage with you on certain elements of intellectual property protection. Let’s go back there and talk about your specific practice and the way that you work with folks.

Angela Grayson: One of the nice things about being an entrepreneur is that you can shift your focus every year if you want. Some years that I want to do more patent work more, maybe more drafting. Some years I decide I really want to do more opinion work. Some years I may decide I want to do more trademark work. One of the things I absolutely love is the fact that I like to think of myself as, it takes one to know one because I’m an entrepreneur just like the clients that I serve. I always want to make sure that the client is getting the best value for their buck. This is a little bit different than an hourly billing model. My clients have access to me. Once I’m their attorney, they can reach out to me for any questions they may have.
“Hey, I’m going through this.” “I’m thinking about going through this deal. What advice do you have?” Some of my clients have also asked me to be an advisor on their board so they absolutely have access to me. My practice is really one of trying to transcend to more of a chief technology counsel for the company. Not necessarily as much transactional. I want my clients to understand that I’m really a partner with them. I’m a little bit like the auntie. I want to make sure that they have the best representation so that they can absolutely have the best outcome. Now don’t get me wrong, so that’s the business aspect of what I do but I absolutely love the strategy that goes into brief writing. I absolutely love the strategy that goes into negotiating with the patent office.
I feel like I get to sit in both worlds. I get to sit in the world of an entrepreneur. Figuring out how to structure my communications, what should our messaging be this month? Looking at the data and figuring out, “Okay, what was my mix of work last year? How is that going to change this year? Then there’s also the pouring through the new trademark rules that are about to publish. I’m very active in some of the legal bar associations and doing advocacy work through that. I also really enjoy supporting the investor community and using all the years of experience that I’ve had in house doing diligence on deals where huge companies were buying maybe other huge companies or smaller companies.
I suppose maybe I’m taking a surreptitious way of answering your question but I think the joy that I get from what I do is the ability to be flexible, to wear multiple hats. My hope is that I’m trying to create or share where I’m a value council versus a transactional relationship is how I structure my practice.

Jeff Standridge: Let’s say that I’m a CEO of a growing mid-sized company, and I think I have some intellectual property and I’ll reach out to auntie Angela. That’s a good new brand by the way, Auntie Angela and her handy-dandy IP services or something like that. Let’s say I’ll reach out to you and… Talk me through how you would progress that first outreach with a client and how they progress through you determining, discovering what they need and then supplying those services to them.

Angela Grayson: The first thing I’d like to know is how did you come about this innovation? There are lots and lots of things that I try to get at it’s definitely on a case by case basis. One of the most important things to figure out when I work with someone is how did this innovation come about? Is this something that you worked with a factory outside the United States on? Is this something that your team primarily worked on? Did you use consultants to do this? The reason figuring out that dynamic becomes important is because one of the most important things I try and tell people and even when I’m helping doing diligence is figuring out who owns it, or who controls the intellectual property. Obviously figuring out what’s innovative and then figuring out who actually owns it and who actually controls it.
Once you figure that out, because sometimes clients are surprised to know that they actually don’t own it and they may not grow it. It may seem very basic but I can tell you and in particular, when it comes to a number of consumer product companies that are not necessarily used to some of the rigor that’s involved in the IP assignment language and agreements. In particular if you’re using a contract manufacturer. That’s definitely one of the first things we have to talk about because if you’re using consultants, when it comes to certain types of technology, you may or may not own it based on the language that you have. If you’ve outsourced some intellectual property in particular if you’ve gotten invention, you may or may not own it, depending on what the language is, or if there is no language. If you’ve done some collaboration work and there is no agreement in place, you may not even own the patentable innovation.
Those are some of the things and this is… I try to make intellectual property straightforward but the reality is that it’s pretty layered in nuance. We try to peel back those layers by asking questions. One of the first things we really have to ascertain is with innovation, do you actually own it or do you control it? If the answer is no, then that’s the first step in trying to make sure that you either get some ownership or you get some control. Because there’s really nothing we can do if you don’t own it, you don’t control it.

Jeff Amerine: As a follow-up to that and sometimes this can be nuanced within an organization. How much time do you have to spend advising clients on what defines inventorship versus not? A good litigator can sometimes use that as a lever to invalidate a patent if there’s… Go into that a little bit don’t let me steal your thunder because you’re the expert. Talk about that a little bit because I think that’s something that not everyone understands what constitutes inventorship and right to be listed on the patent.

Angela Grayson: Yeah and I think there’s a lot of confusion in particular if you come from the scientific community. In the scientific community, the standard for getting someone’s name on a paper is very different than the standard of who should be listed as an inventor. Sometimes too I find in the startup world, someone may be the CEO of a company and they just assumed that they should be listed as an inventor on a patent application. People come at it from different assumptions but it’s really about who is the person who originated the conception of the innovation. Again, it can be different than someone who may be doing experiments in the lab because they taken the conception and they’re proving it out, or the person who’s proving it out may not necessarily be the inventor.
Going that exercise can be challenging not just from a startups perspective but also in large companies. The other thing that I find is well is people do not appreciate how important it is to get agreements in place with their innovative team. Using the word in innovation versus invention, because it’s not clear whether or not something is an invention or not until you really take a full on disclosure. If someone’s created an innovation, if they created some new technology and you’ve not bothered to reduce that relationship to writing in a way that transfers the ownership of that intellectual property to you. By the way, people come and go all the time when it comes to some of these startups.
I like to joke that sometimes people will come me, “Hey, can you help us file this trademark application?” By the time the trademark registers, they’re not even talking to each other anymore. Or by the time the patent application issues they’re not even talking anymore. The other thing too is that when it comes to inventorship, it is on a claim by claim basis. It’s not necessarily based on the paragraphs of information in your patent application. It really depends on what’s in the claims. Inventorship can change if the claims change but that is really where you look to inventorship. I don’t have to say to my small business clients it’s a legal determination but when I was in house I’ve occasionally have to pull the on the lawyer card and this is a legal determination. Even though you might be in charge of the lab, you’re actually not an inventor. I don’t know if that answers that question or [crosstalk 00:30:47] thinking of it but yeah.

Jeff Amerine: It does and in the seven years that I worked at the U of A, and was involved somewhat with the IP portfolio there, we had to go through things like inventorship all the time because there was also this hierarchy of power where someone is a lab manager or department head, they would understand a lot about peer reviewed publications. Just like you say, they would assume that they should be listed as an inventor but it’s like point to the claims that you were involved in creating and it’s like, “Well, I didn’t do that but I had a hand in the original idea.” “Well, okay. Which of those claims came from the original idea.” It’s a nuance that I don’t think a lot of people understand.
I appreciate your explanation was very clear. It’s something that I think any senior leader of an organization of any size, if they think about the assets, they potentially have an intellectual capital. They need to have good counsel to make sure that they handle it right. Because as you were saying, they don’t have an invention assignments agreement and software developers create something. They may have a disputed claim against whether or not they actually own that if they didn’t have those agreements in place so it’s-

Jeff Standridge: Particularly I would think that’s a problem in states like Arkansas, where employment contracts are not generally the norm. Because there’s generally an employee handbook that governs all of your employees versus individual employment contracts.

Angela Grayson: What’s interesting as well, I’ve also had… I do this thing called meet up Monday. I encourage pretty much anybody if they’d like to have a chit chat with me about IP, they can sign up and we can do a call on a Monday. I’ve also had the unfortunate position to tell someone who was an employee at a research institution or university hospital. This person had invented something and submitted an invention disclosure and was leaving the organization shortly thereafter. This person had no idea that going through that process in conjunction with the policy, the employment policy that she had effectively signed her intellectual property to that organization. It goes both ways.
I think people who are working for companies in a particular universities, university hospitals, you need to understand when you submit an invention disclosure, you’re probably assigning your intellectual property right then and there. Sometimes you can assign and this was very interesting in this instance because at the end of the disclosure was an assignment form. This person didn’t realize that they were essentially assigning their intellectual property right then and there. People really have to read and if there’s ever a question, you should absolutely make sure that you connect with your company or the legal department in your company or get yourself an outside attorney to look at what you’re signing. You do need to have some awareness of what you’re signing and what you’re signing away.

Jeff Standridge: Angela, let’s say we have a… I keep wanting to say auntie Angela now. I think I’m going to call you that forever. Auntie Angela, let’s say we have an entrepreneur or a company executive who wants to connect with you for meetup Monday or reach out to you individually, where do they best find you?

Angela Grayson: I’ve tried to make it super easy by going to our website, precipiceip.com. There’s an integration on the website for them to schedule a meeting right then and there. Again, my meetups are on Mondays just because I’m a boutique and I can’t have meetups all week long. I try to focus them on Mondays and usually, we do go over the 15 minutes. What’s really fun is that I have been doing this [inaudible 00:35:01] it takes me two seconds to figure out what’s going on and give people a little bit of guidance. People are like, “Oh should I send…?” No, please don’t send me your stuff. I don’t want to see your data, we don’t have a relationship yet. I promise you I can get the gist of what’s going on just with the call. [inaudible 00:35:21] I said, “Wow, this is the most I’ve ever used 15 minutes for. This is the best 15 minutes I’ve ever spent in my life.”

Jeff Standridge: Very good, very good. Well, how about Jeff, unless you have anything else I’ll ask one final question.

Jeff Amerine: Go ahead. Lead on.

Jeff Standridge: Leave all of our listeners with the best nugget that Angela Grayson has in the world of IP. What do you leave them with?

Angela Grayson: The most important thing and there are many. Again, open innovation is really how business gets done. If you are going to collaborate with someone, make sure you think about having pending intellectual property before you do a deal. Your pending IP does not always have to be a patent application. Maybe it’s a trademark application, maybe it’s a copyright application but depending on what you’re doing with this third party, please don’t reach out to someone and do a deal without having pending intellectual property and a minimum first.

Jeff Standridge: Got it. Very good Angela, always a pleasure to talk with you and to get on the phone or on a Zoom. We appreciate you for carving out some time with us today.

Angela Grayson: Well, thank you for having me.

Jeff Amerine: Yeah. Thanks for coming on, it was great.

Jeff Standridge: All right guys, that’s been another episode of the Innovation Junkies podcast with Angela Grayson, CEO of Precipice IP.

Jeff Amerine: Hey listeners, this is Jeff Amerine. We want to thank you for tuning in. We sincerely appreciate your time. If you’re enjoying the Innovation Junkies podcast, please do us a huge favor. Click the subscribe button right now and leave us a review. It would mean the world to both of us and don’t forget to share us on social media.

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