Beyond the IP Box

AuthorKim R. Jessum
Published in Landslide, Volume 14, Number 4, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
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the legal review. And this works the other
way around, too: being aware of the overall
picture on the assets in acquisitions helps
with the IP review.
My background in IP has been critical in
understanding the importance of collabo-
ration between different business groups
in generating new ideas and innovation. At
Heraeus, I established Technology Days, a
U.S. program that helps scientists and tech-
nical experts in harnessing and leveraging
vast knowledge, resources, and technol-
ogy within the organization. Every year,
select representatives from each business
unit in the U.S. gather to share ideas and
expertise and collaborate across multiple
business units. From elevator speeches to
poster sessions to presentations—and all
the networking in between—we created
opportunities to share core competencies,
establish visions for future projects, and
prevent limitations that hinder them. We
synthesized resources, found solutions, and
leveraged heterogeneous backgrounds and
perspectives that resulted in a cross-func-
tional team of collaboration.
I still consider myself an IP lawyer but
now thrive in a practice that involves a
wider scope that combines the intersec-
tion of IP with other areas of the law—and
sometimes outside of the law. I often hear
from many colleagues who agree that being
a well-rounded attorney and going beyond
the IP box has also served them well in
their careers. n
Our jobs as intellectual property (IP)
attorneys are often too focused on
IP and not on the businesses we
After many years working in-house as a
pure IP practitioner, I transitioned to a role
as a general counsel of a business unit in the
medical device industry. I joined Heraeus,
a large private German portfolio company
that trades in precious metals and manufac-
tures products for many different industries.
I was enthusiastic about a role that handles
IP matters while also offering opportunities
to learn other areas of the law.
As the rst IP lawyer in the U.S. for
Heraeus, I started from scratch to develop
IP strategies with our many businesses,
which was both challenging and exciting.
Working with my colleagues in Germany
and China, we developed a sophisticated
IP global strategy that parallels the goals
of the business. A set IP strategy helped
me concentrate on my other roles in the
company, where IP is only a part of the
many legal issues.
During my career at Heraeus, I have been
involved in commercial, M&A, antitrust,
and regulatory issues, and IP prepared me
for better understanding them all.
When our company was sued for patent
infringement by a large, well-known
competitor, I had my rst in-house opportu-
nity to handle litigation. In patent litigation,
it is key to understand both the business
and the industry, and I also soon learned
how disruptive litigation can be to the busi
ness and its day-to-day operations. If our
people are too involved in litigation, they
may not be selling or making the products.
It is important to have the skills to manage
the case for the best of the entire company.
With Heraeus’s large dental business,
where FDA compliance is important, it was
a smooth transition to learn about FDA
regulations after having worked for many
years with the federal government on IP
An IP background also prepared me well
to become a commercial lawyer. Through-
out my career, I negotiated IP agreements
and settlements, so experience in handling a
large volume of contracts within a company
and understanding the IP provisions has
been invaluable.
A portfolio company like Heraeus sells
and acquires numerous assets. In M&A
transactions, an IP lawyer is often needed
to evaluate IP in acquisitions or negotiate
IP provisions in the purchase agreements
on either side. And, for many companies, IP
can be its most valuable asset. These days,
in handling IP I am also responsible for all
By Kim R. Jessum
Beyond the IP Box
Kim R. Jessum is chair of the ABA Section
of Intellectual Property Law. She is chief
IP counsel U.S., associate general counsel,
and secretary at Heraeus Incorporated
and VP legal at Heraeus Medical
Components. She can be reached at kim.
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