Known as a chemist and pharmacist in nineteenth-century Germany, Wilhelm Carl Heraeus ventured into unfamiliar territory when he explored the art (and science) of jewelry making.
At the time, platinum was a rare and expensive precious metal, mainly because of the challenge it posed to goldsmiths: In order to be forged, platinum has to reach a melting point of about 3,200 degrees Fahrenheit—not exactly an easy task in 1851. The chemist discovered, however, that two kilograms of platinum could be melted in an oxyhydrogen gas flame, resulting in the “first German platinum-melting house.”
By the end of the century, the Heraeus family was processing roughly 1,000 kilograms of platinum every year, and what started as a thriving company that supported goldsmiths and jewelers around the world soon turned into a company that supplies materials for an array of industries, including dental factories and chemical laboratories. Today, Heraeus—a Fortune Global 500 Company still headquartered in Hanau, Germany—has facilities around the world, with a focus in such areas as the environment, health, and industrial applications, along with a portfolio that includes steel, electronics, automotive, and telecommunications industries, among others.
But like any successful company, increasing expansion will always result in more competition, especially in the midst of the Digital Revolution. In an age where it’s easier than ever to have information in the blink of an eye, it has become increasingly important for companies to not only protect intellectual property (IP), but also to build an IP strategy directly in line with the companies’ goals and business objectives. Previously, Heraeus’ businesses did not necessarily incorporate an IP strategy.
Enter Kim Jessum, chief IP counsel US, associate general counsel, and secretary at Heraeus, who took on the task of building an IP strategy from scratch. As Jessum explains, Heraeus has different business units in different technologies. As a result, the IP strategies in the United States differed for each business, and strategies were developed based on a current IP portfolio, business objectives, and competitive IP.
“I have a lot of knowledge about IP strategies from my positions as in-house counsel and outside counsel, so working with the businesses to create a plan for the specific strategy was relatively easy,” Jessum says. “The difficult part has been in its implementation because the industry, goals, and competition [are] constantly changing, and thus the strategy can also be constantly changing.”
Jessum recalls how one of Heraeus’ businesses protected its technology solely through trade secrets, as opposed to having a patent portfolio. This resulted in a lawsuit from a competitor, and the business did not have any patents to protect its technology. “Overall, the company asked if we could take IP strategy more seriously, and that was helpful at least in developing an IP strategy for our businesses because we had the support of management,” Jessum says.
The benefits of a strong IP strategy are countless, and in Jessum’s extensive experience with other companies, she has witnessed these benefits firsthand, particularly when it comes to employees being educated in terms of IP procedures, as well as research and development. She’s also seen the opposite in matters where she needed to start from scratch in building an IP strategy for other firms.
When it came to Heraeus’ businesses, Jessum discovered that some had sound IP strategies, but lacked an internal person to develop a strategy to align with business goals. Much of the time, Jessum says businesses worked with outside counsel and were not developing an overall strategy. In the example of the business that was sued, Jessum says the company was doing well and selling an abundance of products with one major competitor. After being sued, Jessum says she worked with the business to home in on a strategy, which was to reobtain market share and to have more of a presence in IP protection.
“Part of our strategy was marketing; part of it was educating the R&D about what an invention is, how to protect it, and how to improve upon it,” Jessum says. This included working with leadership and employees to determine where the company could file for patent protection, then pushing that team to continue to think about how to improve the product. “Obviously, improving the product was already a part of their job, but it was more about getting them to think outside the box,” she continues. “It’s helping them get the market share back by being a better company, by having better technology, and protecting that technology.”
A strong IP strategy, Jessum explains, also directly aligns with several business aspects, from R&D to sales. Communication, for example, improves dramatically as a direct result of a firm IP strategy. Any successful company needs strong communication, but thanks to the processes put in place from the strategy, the sales team now relays information to Jessum about competitors. It has also resulted in an increase in work for Jessum, as she is now fielding more questions. But Jessum is not complaining about the increased communication.
“I do not only want to manage matters; I want to study competitor patents and see if there is a problem, or help someone develop a product and make sure there is nothing preventing them from making or selling it.”
One of the most difficult aspects of building an IP strategy is the constant industry change, which can result in adjustments to the strategy. Because Heraeus specializes in an abundance of industries, Jessum and her team need to not only keep up with today’s changing technology, but also consistently think ahead about what could be on the horizon.
“You may be doing really well, you may be the market leader, but you have to always think of change, always think of the next thing that’s coming,” she says. “We’re a B2B company, so we have to think of what our customers are doing, keep up with them, and be able to continue to supply products to them even though they are going to change their own technology.”
Jessum credits her teams in the United States and Germany for ensuring that Heraeus keeps pace and for developing a team-oriented strategy. Thanks to this team-first attitude, Heraeus continues to thrive globally.
“It used to be that there was only a patent department in Germany, and now we have me, someone in China, and other counterparts in Europe. We all work together to determine the best procedures,” she says.
