Project Management

AuthorAusten Zuege
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
zue59005_05_c05_179-214.indd 179 7/20/17 8:35 AM
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
.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).
zue59005_05_c05_179-214.indd 180 7/20/17 8:35 AM
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
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).
zue59005_05_c05_179-214.indd 181 7/20/17 8:35 AM

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