Sharon Barner knows patent law and policy from the perspective of a private lawyer, from inside the U.S. Patent and Trademark Office and, most recently, from her position as general counsel of diesel engine manufacturer Cummins Inc.
After the Chicago-based lawyer led Foley & Lardner’s intellectual property department, Barner went into public service in 2009 as a deputy director of the USPTO, where she also served as deputy under secretary of commerce for IP.
In 2012, Barner took the reins of the in-house legal department at Columbus, Indiana-based Cummins. With nearly half of the company’s $17.5 billion in revenue last year coming from outside the U.S., Barner draws heavily from the international perspective she developed while in government.
Barner spoke with The National Law Journal about how the Trump administration can approach patent reform, how a company with manufacturing operations in more than a dozen countries thinks about the president’s pledge to rethink America’s trade deals and steps countries can take to protect IP and foster innovation. This interview has been edited for length and clarity.
National Law Journal: At the USPTO, you led 15 missions to meet with foreign governments stressing the importance of IP. What was your message on those trips and what is important to you now about that message working inside a multinational corporation?
Sharon Barner: My message to the foreign governments was that we needed strong IP laws and we needed strong enforcement. In part, to make sure that we were leveling the playing field for companies that started to do business or continue to do business in those countries. Having strong IP laws is key to those countries to have companies come in and innovate. I would say that’s even more true from a company perspective. It continues to be the key issue: to ensure that [Cummins has] a level playing field in the foreign countries that we operate. For example, our willingness to do innovation in other countries, in addition to the U.S., is led by the ability to protect our research and development and innovation that we put into those new products.
NLJ: Are there any countries where the lack of a strong IP regime discourages you from innovating?
Barner: I don’t think there are any countries where we do innovation currently where I’m discouraged. I mean we have really significant facilities in China and also in India. And I would say that those countries are still moving up the ladder on enforcement, but they are much better than they were five or 10 years ago, both in protection and in enforcement. On the other end of the spectrum, you have Russia. When I was with the [USPTO], we signed the first memorandum of understanding with the Russian patent office in order to get our countries working together more closely on IP enforcement. And I would’ve expected based on my interactions at the time that Russia would have moved up to have more enforcement in that area. And I don’t think they have.
NLJ: And what could Russia do more of or do better?
Barner: Again, I think it’s important for them to have IP laws and policies that mirror those required by the World Trade Organization and have better enforcement mechanisms in the courts and agencies for IP misappropriations.
NLJ: We’ve heard little about whether the Trump administration will be interested in changes to the patent system or what those might be. What insight do you have on what the current administration may be interested in with regards to any reform of the patent system?
Barner: I’m not sure that we have a lot of clarity on what the current administration will do with the patent system. But what I see right now from congressional activity is that there continues to be a lot of focus on the court and on litigation of patents. And I say that from the perspective of when the last amendment to the Patent Act was cast in 2012, they stripped out issues related to litigation because that was a little bit too controversial. And they did it with the promise that they would come back to that issue. So I have seen some activity on the stakeholders in Congress to revisit what aspects of litigation might be changed to strengthen the patent area. So that might be an area that is ripe for this administration to look at and there seems to be some movement to do that from the litigation perspective.
NLJ: Cummins has manufacturing locations across the globe. Are you concerned of any possible trade war or sanctions scenarios becoming more likely under the Trump administration given the president’s talk about renegotiating trade deals or getting a better deal for America?
Barner: I would start from the perspective of consistency. Several of the trade deals, for example NAFTA, have been in place for a long time. It doesn’t hurt to take a look at whether the terms of those trade deals are actually carrying out the objectives of what was intended when they were signed. I think that to the extent the Trump administration continues to take stakeholder feedback on what we believe some of the terms and conditions of the trade deals are and what those things are that need to be revamped — I’m encouraged by that. Are there possible trade wars? It’s possible. But from a company perspective, we deal with uncertainty. And from a general counsel perspective, I deal with it all the time and this is no different than other aspects of policy issues that we have to navigate.
NLJ: Will the decision to pull out of the Paris Agreement have any repercussions on Cummins?
Barner: The Paris climate agreement was just one aspect of U.S. government involvement in clean air and so we actually look at our long-term sustainability to ensure that what we do leads to a cleaner, healthier environment on a basis that’s not hinged to one agreement. So we’ll continue to study the impact of what that has. But we also have obligations in the U.S., to the California Air Resources Board, to the EPA, as well as other global countries’ requirements on clean air. So we don’t just exist in the U.S. We exist in that clean air environment around the globe. We continue to think that clean air and climate understanding is critical to Cummins, to our business and to our sustainability. So we’ll continue to work with the Trump government and others to ensure that we’re moving forward on clean air.
NLJ: You’ve said that one of your accomplishments you are most proud of is having increased the numbers of minorities and women working at Foley & Lardner during your time as chair of its IP litigation group. What are you able to do now about improving law firm diversity from your seat as a GC?
Barner: Diversity is one of our primary goals in staffing matters for the company. I ask each of my law firms to ensure that the women and diverse lawyers in their firm get an opportunity to work and take a leadership role on Cummins matters, and that they get visibility with Cummins in-house counsel. And every six months I bring the firms in and we go over the roles that women and diverse lawyers have played on Cummins matters.
Based on my own experience as a diverse lawyer coming through firms, the key has always been getting good opportunities on complex work, getting visibility with in-house counsel and being able to demonstrate capability. So for me I want the diverse lawyers in those firms that I’ve worked with to have the same experiences.
NLJ: Do you find law firms are responsive or that you’re able to drive change in the way they staff matters and approach your work?
Barner: They have to be responsive and responsible or they will not be on my preferred provider list in the future.