IP Thought Leader Interview: A Discussion with AIPLA Executive Director Lisa Jorgenson

IP Thought Leader Interview: A Discussion with AIPLA Executive Director Lisa Jorgenson

September 01, 2015

After spending most of her legal career addressing intellectual property (IP) issues as an in-house attorney and executive at STMicroelectronics (ST) in Dallas, Lisa Jorgenson was named Executive Director of the American Intellectual Property Law Association (AIPLA) in November 2014. Jorgenson now resides in Virginia and leads the diverse 14,000-member organization as it attempts to provide education, outreach, member service, and advocacy to the IP bar. Stout Managing Directors Michele Riley and David Haas and Director Marylee Robinson recently visited Jorgenson at AIPLA’s headquarters to discuss the issues facing AIPLA and its members and the role of women in the intellectual property profession (IP), as well as to learn a little more about Jorgenson’s personal background.

Stout Journal: Where did you grow up?

Jorgenson: Both of my parents were from the Detroit area and I was born in Kalamazoo, MI. My parents moved around some as I was growing up, so I also lived in Pittsburgh, PA, and in southern Virginia. Probably what I remember most is a relatively small town in southern Virginia called Danville, right on the North Carolina border. That’s where I graduated from high school.

Stout Journal: And what would your high school classmates remember about you?

Jorgenson: Probably not being around too much. I was either working or riding my horse.

Stout Journal: What do you enjoy doing now when you are not working?

Jorgenson: My oldest is now 24 years old, so after a 24-year hiatus, I’ve started playing golf again.

Stout Journal: When and why did you decide to take up the practice of law?

Jorgenson: My husband and I met in Chicago, and at the time he was working as an engineer for a steel mill. When various areas of the mill started closing down, I asked him what he planned to do when they got to his area. Since he didn’t know, I talked him into going to law school with me. When we graduated, we wanted to get away from the Chicago winters, so we decided to move to Dallas, TX, where we had relatives. We ended up staying there until I moved to Arlington, VA, this fall to work with AIPLA.

Stout Journal: When you went to law school, was it your intention to go into IP law?

Jorgenson: No, it probably was my husband’s intention but it was not mine. Before law school, I worked in-house with Westinghouse in sales and marketing, so I decided to start in commercial litigation. After a couple of years, I decided that litigation wasn’t what I wanted to do long-term. Having come from the corporate environment, I went back in-house to a position involving IP at ST, and I was there until the time I joined the AIPLA as executive director.

Stout Journal: Does your husband still practice?

Jorgenson: Yes, he is a patent attorney in Dallas, and currently still lives there with our family.

Stout Journal: What opportunities exist today that did not exist when you began to practice IP law?

Jorgenson: I’ll take the question in a little different direction. When I began practicing, an attorney really had to focus on a specific area, whether it was litigation or patents or another area of the law.

But today, I see more jobs, both in-house and outside counsel, that require attorneys to really understand their client and their client’s business in order to provide the best legal advice and services they require. The opportunities are there to work on a variety of different IP activities. So you may be doing patent litigation, patent prosecution, and supporting or doing patent licensing, all at the same time.

I also see a need in today’s market to be a good business attorney, and to support a client, by really spotting issues. I don’t think that was the case back 25, 30 years ago.

Stout Journal: Do you view the role as more of a problem solver?

Jorgenson: Absolutely. You need to be able to spot issues as well as offer solutions to those issues, whether it’s a copyright issue, a trademark issue, or a patent issue. Even if you are hired to do patent prosecution, you need to be able to understand the other areas to provide the best legal advice for the work you are doing or be able to evolve into these other areas of the law if you want your career to grow.

Stout Journal: It has been said that, years ago, not nearly as many law firms had an IP practice group, because those services were offered by specialized boutiques, but now it has expanded to where many firms have IP practice groups. Do you agree with that characterization?

Jorgenson: I think it goes back and forth and depends on the geographic market. If I were to use Dallas as an example, we have seen large firms gobble up the patent boutiques only to see them spun out again at a later point in time, and then brought back in to another large firm later.

Stout Journal: Can you tell us about your decision to move from serving as in-house counsel to Executive Director of the AIPLA?

Jorgenson: I had been at ST for almost 25 years. I had a very wonderful and successful career there, but I had to make a decision whether or not I wanted to stay there until retirement or go do something completely different. Obviously I chose to go do something different.

Stout Journal: What differences do you see between living and working in D.C. as compared to Dallas?

Jorgenson: Well, the first one is the traffic.

Stout Journal: Even worse than Dallas?

Jorgenson: It is much worse than Dallas, which is why I chose to live fairly close to the office! But aside from the traffic, I notice the D.C. area is a very engaged area. There’s always something going on whether it is in your field, or whether it’s the law in general. It’s a very vibrant city.

Stout Journal: Do you have a term of appointment in your position?

Jorgenson: No. I’m an employee here at the AIPLA, like the others that work here at headquarters and I serve at the pleasure of the Board of Directors.

Stout Journal: How many active AIPLA members are also volunteers within the organization?

Jorgenson: We have about 14,000 members. Of those members, we currently have around 60 committees and task forces. And on each of those committees we have a number of involved members with various levels of engagement. In addition, we have the members of our Board of Directors, including our officers, who are also volunteers.

That’s probably the one thing, working with all the volunteer members that I so thoroughly enjoy about this job. As volunteers they all want to be a part of the work we’re doing and to help us be successful as an organization.

Stout Journal: How many people are on your staff here? How many Board members?

Jorgenson: We have 27 people on staff and 19 Board members including the President.

Stout Journal: What personal goals do you have for your time as executive director?

Jorgenson: I want to make sure the AIPLA remains one of the preeminent bar associations in the world. To do this, we need to provide the services members need and advocate on their behalf.

Stout Journal: What leadership skills do you bring to the position that you think will be beneficial to the AIPLA?

Jorgenson: For almost 25 years I worked with a great team at ST, and since 2001, I headed up the IP team on a worldwide basis. I was very successful at building an environment that would meet both my IP team’s needs and our corporation’s needs. I gained experience working on governance issues for the IP organization, creating policies that fit well with both the IP organization and the overall corporate strategy, and I managed ST’s IP staff and staffing needs worldwide.

Stout Journal: You were on the AIPLA Board of Directors previously, from 2005 to 2008. Can you explain a little bit about how the relevant issues have changed over time?

Jorgenson: I don’t think the issues have changed necessarily, but we’ve probably added more issues over time. For example, since the time that I was here on the Board, the America Invents Act (AIA) has come into effect, and we have now had several years of working with and facing issues in the AIA. We’re also dealing more with international issues, such as harmonization. I think the international issues have really grown dramatically since I was on the Board. There are new twists every day, but all around the same forms of IP: primarily patents, trademarks, copyrights, and trade secrets. Certainly, the complexity of the issues remains high.

Stout Journal: Regarding international harmonization, is that something that’s being embraced or resisted by membership?

Jorgenson: I think the membership is very keen on having international harmonization. Many would like to have the ability to file for patent protection in more countries with high quality procedures and less cost. I think we will see more of that in the future with efficiencies between the various patent offices around the world, including at least the major patent offices such as the USPTO, the EPO, the JPO, Korea, and China.

Stout Journal: What are some of the hurdles that need to be overcome in order to achieve international harmonization?

Jorgenson: Many of the harmonization issues are centered on the different systems and processes used by each of the different patent offices. In order for true harmonization to occur, the Offices will need to figure out how to get them all to work together. There is currently no single system, and the major offices are working diligently to find solutions. For example, when you file an application in one country, can that application also be automatically filed in all the other regions? Or how do you exchange documents between two offices? It’s going to require systems and processes that are capable of working together, and that is no easy task.

Stout Journal: As for trade secret legislation, we know there are proposed ideas to bring that under a federal statute as opposed to the state statutes that govern presently. Does AIPLA believe that’s a good idea or a bad idea?

Jorgenson: In general, AIPLA is in favor of creating a federal trade secret right, and we supported a bill during the last Congress. The goal is to make sure that confidential trade secret information is protected nationally, so to that extent, we would be in favor of a balanced bill that can achieve that goal while giving individuals and corporations a private right of action.

Stout Journal: What would you say are the three biggest issues facing AIPLA members?

Jorgenson: Probably the first issue, and these are not necessarily in order of importance, would be the concern that changes in the law and rules, whether from the judiciary, legislature, or regulations, will create uncertainty for both our members and their clients. So our members need up-to-date information and education on all of these changes and how they may affect their practice and their clients’ businesses.

The second issue might be the changes in how patentable subject matter is defined, which impacts innovation, research, and development. Our members need definitions and guidelines that will be correctly and consistently applied when determining patent-eligible subject matter, in light of the recent Supreme Court and Federal Circuit decisions. This would provide some certainty when deciding whether or not to file a patent application.

The third issue is probably the post-grant review procedures at the patent office, which are the administrative procedures that are used to challenge already issued patents. These procedures are important for providing faster and less expensive alternatives to litigation, but the procedures need to be fair and equitable to all parties to guard against possible abuse. With this in mind, there are some changes being considered that could improve the proceedings and help to level the playing field between the petitioners and the patent owners.

Stout Journal: Do you have an expectation as to how long it will take the changes in post-grant proceedings you are advocating to create that balance?

Jorgenson: The procedures are just a couple of years old at this point, so it’s not surprising that some adjustments to the way they were initially implemented would be needed. I think some of the adjustments will come from the legislature, although I can’t predict when that’s going to happen. And other adjustments will be made through rule changes by the USPTO. The USPTO has sought feedback from the public on the administrative proceedings, but it still takes time to implement any rule changes. The USPTO has stated that this will be an iterative process, so it is something AIPLA will be paying close attention to for years to come.

Stout Journal: Does AIPLA have any concerns about trends in patent litigation based on current changes to the case precedents, for example, the Supreme Court’s Alice decision, fee shifting, or the changes brought about by the AIA?

Jorgenson: AIPLA is always concerned about those kinds of issues, and we’re going to work as diligently as we can to represent our members, whether it is patent litigation reform, administrative procedures at the Patent Office, or in the courts on patentable subject matter issues, or on any important IP issue.

Stout Journal: Does AIPLA have a position on any of the bills currently pending before Congress?

Jorgenson: AIPLA is in a unique position because our members include attorneys on all sides of these issues. That forces us to be mindful of how any changes in the law will impact the patent system as a whole, not just how they will impact one type of litigant or one particular industry. From that perspective, there are various provisions in the patent litigation reform bills in both the House and the Senate that we can and do support. And we still have some concerns about other provisions. We appreciate all the effort that’s being put into coming up with these two versions of patent litigation reform, but we still think a lot of work needs to be done to find the right balance.

Stout Journal: Is part of that work educating those who are writing these bills on these issues? Do you feel as though sometimes part of the struggle is not everybody in Congress writing the bills is actually in tune with the issues?

Jorgenson: I think many Members and their staff are very familiar with the issues. They’re very talented people, and they have been studying these issues for some time. We do our best to explain to the Members and their staff what our AIPLA members need and why it’s so important to consider the varying interests in the patent community. We try to make sure that they understand our view even if we ultimately agree to disagree on the best approach to solve the problem of abusive patent litigation.

Stout Journal: Focusing now on the AIPLA membership, what do you see as the biggest challenges AIPLA faces in recruiting new members?

Jorgenson: Recruiting new members is both a challenge and an opportunity. Certainly we need to be able to identify the potential members of AIPLA, but we also need to retain them as members after they join. To do that, we have to offer them what they need, whether it’s the highest quality educational programming and CLEs, or discounted insurance for sole practitioners and small firms, or representation in Congress, before the judiciary, or the USPTO.

In addition, it’s important that members see their involvement in AIPLA as part of their professional development. There are many opportunities for our members to engage in many different areas of IP law. We need to provide our members with the benefits and networking opportunities they are looking for and to create opportunities for them to move into leadership positions. The challenge is to find that intersection between what they would like to see from AIPLA and what we can offer.

Stout Journal: And does it become an exercise then where you’re constantly looking at new services to add?

Jorgenson: Yes, but it also requires us to refine the services that we are currently providing. For example, a majority of members look to our high quality CLE and networking events to stay current on issues that help them in their jobs and careers. We are known for our high quality CLE programs, which cover every aspect of IP. In order to maintain this reputation, we are constantly evaluating new subject areas for programs, as well as looking for ways to better reach our members through road shows around the country or online CLE programming.

At the same time, we see a need for discount programs to serve our small firm and solo practitioner members. We have a lot of members, for example, who have signed up for the insurance program, which was established just a few years ago.

Stout Journal: What kind of visibility does the AIPLA have on Capitol Hill, and do you think this level of visibility is sufficient?

Jorgenson: We have a long history of actively representing our members’ interests on Capitol Hill. We are committed to doing so in a way that positively affects the operation of the IP system, keeping in mind what is best for the IP system as a whole.

Our members work for both owners and users of IP. As a result of the diversity of our membership, I think we’re viewed on Capitol Hill as a useful resource for information. We aim to provide a very balanced viewpoint on IP issues, and I think that is what others have come to expect from AIPLA.

Stout Journal: Do you have relationships with other executive directors of membership organizations in professional areas that have the same focus?

Jorgenson: AIPLA has always had strong relationships with IPO, INTA, and the ABA/IPL Section, as well as with other organizations like American Corporate Patent Counsel (ACPC). I was also on the board of directors at IPO and ACPC before I came here, so that has helped to strengthen those relationships. When it comes to areas of common interest for our organizations, we occasionally join forces to strengthen our message. For example, we worked with IPO and the ABA/IPL Section on joint comments on the regulations implementing the AIA post-grant proceedings after the AIA was passed.

Stout Journal: Does the AIPLA have any formal or informal relationship with the USPTO?

Jorgenson: On the policy side, we give formal responses to the USPTO when we are asked for our opinion on particular issues, either directly or through comments that respond to the Federal Register notices. We look to our members in the relevant committees to analyze the questions and issues presented, and then they’ll propose a response based on the feedback they receive from committee members, which is then considered by our Board of Directors. We also work closely with the USPTO on a number of educational programs throughout the year. This year AIPLA and the USPTO held a number of co-sponsored road shows around the country on issues such as patent quality and the AIA trial proceedings. In addition, we work with them each fall on events such as the Partnering in Patents Programs and collaborate on public outreach projects like World IP Day.

Stout Journal: Have you been successful at attracting young people to the AIPLA?

Jorgenson: Yes, despite the fact that I don’t tweet. We have a number of resources, apart from our educational programs, that can be very valuable to someone just starting out in their career. We’ve always had a program to reach out to law students. Our “law student affiliate” membership category is an economical way for them to become acquainted with all that AIPLA has to offer, including coaching on careers in the IP field. Once they graduate, they can join our very active New Lawyers Committee, which frequently gives its members the opportunity to write papers on specific topics and to network with other professionals around the country. In addition, our Public Education Committee, together with our Fellows and New Lawyers Committees, have started reaching out to engineering and science students who might be interested in going to law school.

AIPLA is an organization where even a new lawyer can quickly move into a leadership role by being actively engaged in a committee.

Stout Journal: Tell us about the AIPLA Foundation.

Jorgenson: The American Intellectual Property Law Education Foundation (AIPLEF) is a charitable organization established in a 2001 partnership between AIPLA, ABA/IPL, the Minority Corporate Counsel Association, and Johnson & Johnson. It sponsors scholarships for deserving diversity students and has been very successful. We have just been delighted with the high quality of applicants to the program and the number of scholarships we’ve been able to give out.

In the past 10 years, nearly $2.5 million in scholarships have been awarded by the AIPLEF to students interested in IP law. Since its inception, AIPLEF has awarded scholarships to more than 90 students from over 50 law schools in 22 states and the District of Columbia.

Stout Journal: Since you began your practice in intellectual property law, how has the role of women changed in the profession?

Jorgenson: I do observe that there are some key senior positions in the IP field held by women, such as the Director of the USPTO, Michelle Lee; the Chief Judge of the Federal Circuit, Judge Sharon Prost; and the Register of Copyrights Maria Pallante. Until this month, the head of the ABA/IPL Section was Lisa Dunner, and AIPLA’s President has been our own Sharon Israel. In addition, our next President will also be a woman, and 3 of 5 members of the AIPLA Executive Committee are women. These are important roles in the IP world, and I hope to see this trend continue for the many talented women IP lawyers in our field.

With that said, there’s still a lot of work to be done in this area, making sure that women coming into the field will ultimately have opportunities to move into senior corporate IP positions or into law firms at the managing partner and senior partner levels.

Additionally, while I’ve seen more women move into the science areas in IP, I have not seen as many move into the engineering fields. When I was in-house, I tried to hire women IP attorneys with engineering backgrounds, and we really struggled to find them. I hope this will change to open up the opportunities for women.

Stout Journal: If a young woman considering different career options approached you today to ask for advice regarding an IP law career, what would you tell her?

Jorgenson: I would tell her to not only stay focused on the job that’s in front of her but to become engaged in other things, whether it is talking to people in other areas of your corporation or associating with other lawyers in your law firm, or joining an organization like AIPLA. Networking and becoming engaged in activities outside of your day-to-day work will not only help you be a better all-around lawyer and counselor to your clients, but it will help you get noticed and help your career.

Stout Journal: You mentioned balance a couple of times in your answers today; I’m assuming you’re talking about balance not only between IP owners and IP users, but also between corporate entities and individual inventors and so on. Can you articulate what’s important about that sense of balance and what you’re trying to achieve through that sense of balance?

Jorgenson: I think we need to look first at the diversity of our membership. In patent litigation, we represent people on both sides of the “V,” both defendants and plaintiffs. So we’re going to be getting input from both of those perspectives, as well as hearing differing views from corporations and law firms. We also have members who focus on prosecution or on transactional work, and members who represent sole inventors and small businesses.

This diversity is what makes AIPLA so strong. Gathering and discussing the various viewpoints is a part of the whole process. Once we do this, the Board is able to weigh the merits of all of those views and produce an AIPLA position. It doesn’t always work flawlessly, but it works more often than it doesn’t work. We see ourselves as stewards of the IP system, so our positions need to be well balanced to preserve the integrity of the IP system as a whole.

Stout Journal: What do you see as the main issues, concerns, or challenges in U.S. trademark and copyright law today?

Jorgenson: One of the main issues of concern for U.S. trademark owners is ICANN, the Internet Corporation for Assigned Names and Numbers, and the issues around the operation and the structure of the organization moving forward. Additionally, ICANN’s new gTLD (generic top-level domain) program has brought up a number of new issues relating to the ability of trademark owners to protect their brands online. This is an area that AIPLA will be closely studying over the coming years.

For copyrights, the House Judiciary Committee has held numerous hearings on a number of different issues in copyright law over the past several years, including the operation of the Copyright Office itself. The Administration is also looking at various copyright issues. It will be interesting to see what policy recommendations or proposals come out of all this activity.

Stout Journal: What would you like to tell the members of AIPLA about what you are doing to further their interests?

Jorgenson: Our overall mission is to advocate on behalf of our members, both domestically and internationally, and to be a leader through our commitment to education, outreach and member services. We will continue to work hard to ensure that we have targeted our services to what our members need and want, in terms of professional activities, professional education, and products.

I also want to make sure our members understand that as we represent them, we want their feedback and involvement through our committees. They are the volunteers who do the work and make the recommendations to our Board of Directors, which informs the Association’s priorities and determines where we will go as an organization.