August 5, 2021
“Volvo Cars chief IP officer departs to head up US boutique,” IAM Media, August 5, 2021
After three busy years at Volvo Car Corp, Ray Millien has switched career paths to become CEO of US IP boutique Harness, Dickey & Pierce. In an exclusive IAM interview he looks back at his time in Sweden and forward to his new challenge
Many private practice attorneys dream of going in-house, but Ray Millien is excited about doing it the other way. After three years as the chief IP officer of Volvo Car Corp in Sweden, he has headed home to the US to lead an IP boutique law firm with roots deep in the country’s auto industry.
Millien will not be practising IP law as the CEO of Harness, Dickey & Pierce in Troy, Michigan, but instead will oversee the running of its departments and day-to-day business. The firm was founded in 1921 by the-then head of the patent department at Ford.
“It’s obviously something I haven’t done before,” Millien says. “I have a 100-year-old firm that displayed confidence in me. It’s humbling.”
He approaches the work from a unique angle because, for years, Millien has been the client that outside counsel wanted to represent. He started running the Volvo IP operation in 2018 and then, from 2019, leading its tech fund too. Before that, Millien served as general counsel for IP and engineering at GE Oil & Gas. His resume also includes stints as an in-house IP lawyer at GE Healthcare and American Express.
Earlier in his career, Millien practised IP law at law firms like DLA Piper and Sterne Kessler Goldstein & Fox. He also co-founded a corporate and IP law firm, PCT Law Group.
Millien entered the automotive sector at an interesting time as manufacturers were placing a higher priority on IP.
“The automotive industry was about, ‘Oh, let’s file IP around brakes or doors or handles, or things like that,’ but now, it’s more software,” he explains. “There’s now over 150 million lines of code, at least, in a modern car. How do you go from an industry always concerned about protecting hardware, to now, how to develop, protect and leverage software?”
Volvo Car had fewer than 1,000 patent families when Millien took charge of its IP department in 2018.
“I know, pre-covid, we more than doubled our annual filings in my time there,” he says.
Millien reveals that his most successful strategy was basic: marketing. He reached the innovators in the company’s research and development department, stressing the importance of IP to Volvo Cars’ value, success and future.
Delivering this message to R&D colleagues was more successful than another strategy that many IP teams deploy, he believes. Others set goals to file a certain number of patent applications in a year, Millien explains. But the numbers game doesn’t work.
“That is the tail wagging the dog,” he says. “Instead, we have to go to R&D and ask: ‘What is our technology road map? What is important here? Where is our company going?’”
Millien says patent lawyers should talk with the innovators, discover what inventions are important, learn about the technology advantages that the company has over its competitors and envision three to four years down the road. From there, lawyers should patent as many features around the new product as possible, but with the focus on high quality rather than quantity.
Millien believes that autonomous driving is the most exciting development for IP attorneys in the automotive industry.
“When you say autonomous driving, it’s not like there is a black box that does autonomous driving. If you open-up that box, there is a lot of technology in the stack. There are a lot of features and problems to solve within that umbrella of autonomous drive,” he explains.
Manufacturers like Volvo Car Corp understand that exciting innovations in driving won’t always come from their own employees. That’s why many have developed technology funds to invest in start-ups. The Gothenburg-based company, owned by Geely, chose Millien to lead its investment arm.
“It’s not usually the job of chief IP counsel to run a tech fund,” he notes. “If you think about it, though, it made sense, because our internal technology fund was really figuring out how to invest in companies to complement our own internal R&D.”
Millien looked for start-ups that produce products that could have ended up in a Volvo car. He hoped they would grow enough to become suppliers. One example of a successful early investment was a company called Luminar, a lidar technology innovator that went public earlier this year.
Lidar sensors are like radar but use light waves rather than sound waves to measure the distance between objects. The technology has become key for safety features and autonomous driving – like measuring if a driver is backing up and about to hit something.
Just as with his internal IP mining strategy, Millien’s relationship with Volvo Car Corp’s R&D team was key to finding the best start-up investment targets.
“Talk to the engineers on the ground,” he explains. “They know what is hot in their industry. They do the reading. They stay up-to-date.”
Millien says that his in-house experience means he can fully appreciate the investments that organisations make when they file for IP rights.
“I don’t think every company has figured out how to leverage or get a return on the money that they spend on IP. In any major company, probably 50% of the legal spend is in the IP department. People have been talking about, for two decades now, how to turn IP from a cost into a profit centre,” Millien says. “Very few have actually achieved that.”
He will keep that in mind when returning to the law firm world, he explains.
He poses a question: “How do you really help clients get a return for the investments they make filing for IP rights?”
The answer, he continues, is for Harness IP to provide holistic legal advice that addresses every step of the IP lifecycle. He does not want the firm’s services to start or stop when the client obtains a patent.
Beginning with the invention disclosure stage, an attorney can counsel a company about how to ask questions and ascertain how that invention might turn into a business asset, Millien states. From there, an attorney can write a patent application with marketability in mind and prosecute it at the US Patent and Trademark Office in a way that obtains the broadest coverage possible.
He also reveals that his predecessor as Harness IP CEO, Bill Coughlin – who now becomes the firm’s CEO emeritus – repeatedly sought to recruit Millien to succeed him and refused to take no for an answer.
Coughlin started in January 2020 as Harness IP’s first CEO. He had stood down as assistant general counsel at Ford Motor Co and CEO of its IP subsidiary, Ford Global Technologies. Millien explains that Coughlin’s time in charge at Harness IP was meant to be temporary, as he always intended to retire sooner rather than later.
The market has been tough for other IP boutiques in recent years. In June, Brinks Gilson Lione merged with Crowell & Moring, a 465-lawyer big law firm on the Am Law 200 ranking. Over the years, the US has lost many other specialist operations that once dominated the country’s IP scene, including Fish & Neave, Pennie & Edmonds, Arnold White & Durkee, Morgan & Finnegan and more.
Millien acknowledges that the Brinks merger “sent a lot of shock waves through the IP community” but cautions not to read too much into the trend.
“The report of the demise of the IP boutique has been exaggerated and it is premature,” he claims. “There will always be room for IP boutiques for a certain class of clients who know what they need and want to go to a specialist.”