Project Management

• Author: Austen Zuege
• Pages: 179-214

5

Project Management

This chapter will help you learn:

• Best practices for communicating technical information

• How to develop and implement policies and procedures for

communicating sensitive, regulated, and/or privileged information

such as export-controlled data and legal opinions

• The importance of revisiting project scope, managing uncertainty,

and tracking budgets

• How to effectively communicate project status and keep projects

moving forward

• How to facilitate relationships among diverse groups of stakeholders

Project management focuses on the tools and skills required to

successfully plan and execute a project. Management of freedom-

to-operate (FTO) projects is important to ensure expectations are being

communicated and met and that all parties understand their roles and

responsibilities as well as the nature and scope of the project, includ-

ing relevant risks. Chapter 4 focused on the considerations necessary

to effectively organize and structure an FTO study—from defining the

scope and identifying stakeholders to setting a timeline and budget.

While these are all key elements of project management, Chapter 5

focuses on the additional considerations necessary to ensure the suc-

cessful execution of the FTO study once underway.

Project management has emerged as a unique discipline, and

legal project management, specifically, has come to be regarded as a

key aspect of modern legal practice. There is a wealth of general proj-

ect management literature available, and a growing body of writing

on the topic unique to the legal services industry. While this book is

not meant to be a comprehensive overview of project management,

some useful resources for further reading are Legal Project Management

179

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180 Patent Freedom to Operate Searches, Opinions, Techniques, and Studies

in One Hour for Lawyers1 and Legal Project Management.2 Two resources

particularly relevant to assessing FTO are Intellectual Property Manage-

ment in Health and Agricultural Innovations: A Handbook of Best Practices3

and The Next Generation of Freedom-to-Operate.4

5.1 Sharing Information with Outside Firm(s)

A thorough FTO study generally requires the sharing of technical data

or information pertaining to the feature or technology being evalu-

ated. Information regarding features or technologies that have limited

complexity, or that can be described relative to well-known publi-

cations, may be communicated verbally. More commonly, however,

technical drawings, prototypes for visual inspection, data collections,

or written explanations of the technology are required. In both sim-

ple and complex cases, it is important to determine what information

may be deemed sensitive (e.g., subject to export controls), what infor-

mation is necessary for a thorough FTO study, and what information

is extraneous and can or should be left out. Additionally, it is import-

ant to determine, in advance, who has authority to provide potentially

sensitive information to an outside entity (e.g., patent search firm or

patent law firm), how such information will be shared, and who will

have access to the information being shared. Project management

includes implementing policies, procedures, and tools for effectively

sharing information with outside entities, while identifying and miti-

gating the risks associated with sharing sensitive information.

5.1.1 Export Controls

The sharing of technical information or data needed to facilitate an

FTO study may be subject to export controls. In the United States,

export control regulations cover the export of certain technologies as

well as technical information or data to persons or entities outside the

1 P H. W & D B. R, L P M 

O H  L (2013).

2 S B. L, L P M (2009).

3 Gillian M. Fenton et al., Freedom to Operate: The Law Firm’s Approach and Role, in 2

I P M  H  A I: A

H  B P , 77–78 (Anatole Krattiger et al. eds., 2007), avail-

able at https://web-beta.archive.org/web/20091114161756/http://www.iphandbook

.org/handbook/ch14/p04/index_print.html. While focused on issues relevant to tech-

nological advances in health and agriculture, this resource provides general informa-

tion relevant to all FTO studies.

4 Gregory W. Smock & Suneel Arora, The Next Generation of Freedom-to-Operate, 

M I. P. I.  (2010).

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Chapter 5: Project Management 181

United States or to a non-U.S. citizen or resident alien in the United

States (considered a “deemed export”). “Export” can include the oral,

written, and electronic disclosure of information and data as well as

visual disclosure of the feature or technology subject to export con-

trol regulations.5 The export of information outside the United States

or to a non-U.S. citizen or resident alien in the United States may

require approval from the U.S. government in the form of an export

license. Several regulations and regulating entities may be implicated

depending on the type of technology or information being exported

and to whom the information is being exported.6 Although this sec-

tion focuses on U.S. export control regulations, it is important to note

that other countries may have their own export control regulations,

and businesses—particularly multinational entities—should become

familiar with the regulations in the countries in which they operate.

Not all technical information and data is subject to export con-

trol regulations. In the United States, there are exceptions for technical

data that has been published or made public domain. Examples of

information in the public domain include published books, journal

or magazine articles, and pamphlets available in print or electronic

format; information provided or presented at conferences or seminars

open to technically qualified members of the public; websites that are

publicly accessible; published patents and applications; and technical

data that is connected with the filing of a patent outside the United

States that meets other regulatory controls, such as receiving a foreign

filing license from the U.S. Patent and Trademark Office (USPTO).7

Sometimes, the technology or feature being evaluated in an FTO

study has been fully disclosed in a published patent application and

no further information sharing is required beyond directing the entity

5 See Bureau of Indus. & Sec., Export Administration Regulations, https://www.bis.doc

.gov/index.php/regulations/export-administration-regulations-ear (last visited Apr.

4, 2017) (Part 772—definitions—defines “item” as “commodities, software, and tech-

nology” and defines “technology” as “specific information necessary for the ‘develop-

ment,’ ‘production,’ or ‘use’ of a product”).

6 For example, the Department of Commerce regulates the export and reexport of

U.S.-origin dual-use goods, software, and technology under the Export Administra-

tion Regulations (EAR); the Department of State regulates the export of defense articles

under the International Traffic in Arms Regulations (ITAR). In addition to regulating

the type of information that can be exported, the United States applies trade sanctions,

embargoes, and other restrictions to certain individuals, entities, and countries. See also

15 C.F.R. pt. 730 (EAR); 22 C.F.R. pts. 120–130 (ITAR); 10 C.F.R. pt. 810 (Department of

Energy).

7 15 C.F.R. §§ 734.7, 734.10. Patent applications filed with the USPTO for an invention

made in the United States are considered to include a petition for a foreign filing license

and the foreign filing license, if granted, is generally indicated on the filing receipt. 37

C.F.R. § 5.12. See also 37 C.F.R. § 5.11(a) (covering USPTO licensing authority).

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