12:01 • 20 Nov 2008
Tales from the shop floor: Donal O'Connell
In the hothouse world of IP law, where most practitioners have spent their whole lives in fervid legal study and application, Donal O’Connell tells Edward Fennel about his unorthodox ‘conversion’ to IPBetween 2003 and 2006, Donal was leader and manager of the IPR Patent Creation team at Nokia. He is now involved in a number of IPR Special Projects including, most notably, the Eco-Patent Commons initiative where he is a core team member. But for most of his working life Donal has been a successful software engineer.
Irish by birth and education, Donal’s Nokia career progression took him around the world as he rose through the ranks to become a project manager. And although at one stage he set up a major R&D operation in Texas, he was never just a ‘boffin’.
Instead, as an engineer he was always interested in the practical down-to-earth manufacturing process: ‘I spent a lot of my time in factories and got on well with the people who managed them.’
Curiously enough, it was this experience that enabled him to make his mark in the intellectually refined world of patents. This has culminated in the recent publication of his book Inside the Patent Factory: The Essential Reference for Effective and Efficient Management of Patent Creation which, as the product of an engineering mind, marks a fresh approach to the corporate patent strategy.
Change tack
After five years heading up Nokia’s R&D centre in Texas, in 2003 Donal decided that it was time for him to move back to the UK and spread his wings. When Donal discussed his desire for a career change with his line manager, the company could not have been more supportive. Keen not to lose his talents, they made a remarkable suggestion. Would he like to move across to become boss of the patent creation function?
Slightly taken aback, but unabashed, Donal agreed. It meant that he could stay with the company and take on a fresh challenge. Yet the first few weeks were intimidating. He found himself amidst a group of people using a vocabulary to which he was a complete outsider. Straightforward words – such as ‘application’, which had meant one thing as an engineer, suddenly meant something quite different.
So, like a good professional, he started to read extensively about the subject and immersed himself in the processes. What he saw was that although Nokia was absolutely at the leading edge of technology, the basic issue was the same as throughout IP history – the timeless need for innovation to be encouraged by the protection given to new inventions. In the classic way of a new arrival, free of conventional assumptions, Donal started to bring a fresh perspective on established practices.
‘I had to get an understanding of the way the patent process worked. So, drawing on my prior experience, I began to analyse it as a form of manufacturing. For example, you start with the raw materials coming in – the technical ideas. You do various things to them using a variety of processes and then you get a product – a patent – coming out at the other end. And, just as in manufacturing, you sub-contract some of the work outside and you buy in subcomponents. OK, it may not be an absolutely exact analogy but it was pretty close. And, once I had got that, I was able to start analysing what was going on.’
It was this new way of looking at things which laid the foundations for Inside the Patent Factory. Again, it was almost chance which lead him on to it. ‘I had taken lots of notes during the early stages in my new job and it was a question of what I should do with them. A colleague remarked that it would be good if the notes could be circulated more widely. It then occurred to me I should make a book out of them.’
| ‘You start with the raw materials coming in – the technical ideas. You do various things to them using a variety of processes and then you get a product – a patent – coming out at the other end.’ - Donal O'Connell |
But as well as a useful analogy, Donal had gained deep insights into how a patent process should be managed by having the temerity – as an engineer – to look in detail at the way Nokia operated its own processes. ‘There was an assumption that we were doing it pretty well but, as a team we were able to reevaluate and say, “OK, let’s benchmark ourselves against comparable businesses”.’
It was a sobering exercise. For a company used to being a world-leader the results of the benchmarking exercise showed that, in this field, at least, Nokia was not ‘Best in class’. This revelation gave a tremendous stimulus to a root and branch review of the way things were done: ‘The results of the benchmarking exercise woke us up. We realised we needed to take action to change the way we were doing things.’ Issues of quality and cost management, metrics and effectiveness all came under scrutiny leading to the conclusion that a major step change improvement was needed. In particular, we saw there wasn’t enough teamwork or co-operation with the company’s patent agents.
‘What we are trying to do all the time is to convert a technical document into a legal document,’ he says. ‘Now, this is not an easy thing to do. But there is a temptation just to hand the information over to the company’s external patent agents and leave them to get on with it. However, that is not the best solution. The critical challenge is to capture the essentials of what you are trying to protect and we came to see that this could only be done by creating a strong partnership with our patent agents. You have to get to know your patent agents really well and they need to get to know you – and that really takes some working at.’
Having seen the problem, Nokia adopted some quite innovative measures for building closer relationships with its patent agents. ‘For example, we started to hold regular seminars in which we explained to them what we were doing as a business and that really created an impact,’ he recalls. ‘And we clarified the professional roles of our associates. In other words, we got the fundamentals properly in place.’
Supporting collaboration
It was a family illness which forced Donal to put a brake on his fast-moving management career. ‘I was travelling very extensively and it just became impossible to reconcile that with my family responsibilities,’ he explains. ‘My success in both my time in R&D and IP management has been due primarily to being surrounded by very good and competent people helping and supporting me. They allowed me to step away from my managerial responsibilities to concentrate on specialised projects that I could manage from home.’
Perhaps the most significant of his new projects is the Eco-Patent Initiative. ‘Nokia is dedicated to making its contribution to supporting co-operation and reducing barriers where environmentally sensitive devices are concerned,’ he says. So it joined forces with WBCSD, IBM, Pitney Bowes and Sony to make available to the market, free of royalties, its IP in environmental products. ‘We want to foster a spirit of co-operation and say to people “feel free to use these ideas”,’ Donal explains. But, as he points out, this can only be done when the scope of the patents is absolutely clear. ‘Before you can give something away you need to know exactly what it is you own,’ he adds. What a refreshing idea.
DONAL O’CONNELL CV IN BRIEF
1985 Degree in Electronic Engineering from the National Institute of Higher Education, Limerick, Ireland
1985-89 Software engineer, Phillips, Holland
1989-92 Software engineer, Nokia, UK
1992-97 Project manager, Nokia, UK
1997-2003 Led and managed the Nokia R&D centre in Texas
2001-03 Environmental manager for Nokia in the Americas
2003-06 Led and managed Nokia’s IPR Patent Creation team
Current Director of IPR at Nokia, team member of the Eco-Patents
Commons initiative, which was launched in January 2008
This article first appeared in IP Review, issue 22