John Bates
GENERAL COUNSEL
CLARITY SOLUTION GROUP
CHICAGO, IL, USA
COMMITTEE AFFILIATION: INTELLECTUAL PROPERTY
Background and Law Department
I am currently general counsel of Clarity Solution Group, LLC in Chicago, IL. Clarity is the largest onshore consultancy exclusively focused on advanced analytics and big data. Prior to working for Clarity, I was embedded in a strategic sourcing and vendor management group supporting IT at US Cellular. My career has included a variety of technology companies, including software development, electronic auditing, eCommerce, music licensing, manufacturing, and consumer electronics.
What interested you in the in-house practice of law and how did you come to be an attorney at the Clarity Solution Group, LLC?
It’s a good question. I’ve held business and legal positions throughout my career, but in-house always seemed more interesting and active because we are involved in the success of the business.
I worked with Clarity for many years while I was at US Cellular. As I continued to negotiate agreements with their leadership and understand the implications of big data and data analytics, I became very interested in the field and wanted to work in this area. It was a great opportunity because I worked closely with their resources and I could see the intelligence in their data scientists. I appreciated their customer service approach, so it was exactly what I wanted in my next position.
What is the single greatest challenge that your law department is facing today, and how are you dealing with it?
That’s a difficult question to answer because there are so many competing issues that have to be addressed. If I had to be specific, it would be data security because it continues to challenge all of us and is evolving quickly.
If I had to look at it from a holistic viewpoint, I think scalability is my biggest challenge at Clarity. As in-house counsel, we have competing priorities all the time and yet we are also trying to coach, train, and proactively address changes.
If I look at contract review, data security, or IP portfolio, I have to think about how can we create repeatable processes and purchase IT solutions that can double and triple within a relatively small amount of time. When I am evaluating a policy or an IT approach, I am constantly trying to evaluate whether it will allow the growth that we need, address our current and future issues, and stay within budget. Unfortunately, this doesn’t allow much time to do other proactive projects that I would like to do.
In October 2015, you were elected as chair of the Intellectual Property Committee. How did you got involved initially?
I have to smile when I’m asked about that because there were several coincidences that came together and the world conspired to make it happen. I was actually in transition and involved with my local chapter along with several committees. There was a lottery at the ACC Chicago Annual Dinner and I won the chance to go to the Annual Meeting in San Antonio. This was my first chance to meet in-person with the IP leadership.
It’s been a while, but somewhere in this same timeframe Monica Winghart, who was the chair of the IP Committee, asked if I wanted to help out with the committee and I naturally agreed. As a true leader, she put me to work and the rest is history! We spend two years at each position prior to moving up so I’ve been working with the IP family for many years.
What are some of the ways that the Intellectual Property Committee provides value to its members?
I feel that the value is extended from those who want to learn about a specific area and happen to practice in other areas to those who are experts and want to continue to fine-tune their skills. We provide written materials that will give introductory best practices to in-depth articles and checklists of cutting-edge topics. Our monthly conference call includes a “What’s Hot?” presentation that keeps everyone up to date with contemporary IP issues and our Quick Hits give a detailed presentation from Kilpatrick Townsend SMEs across the IP spectrum.
We provide a plethora of written materials, presentations, webinars, and Annual Meeting programs. Aside from all of that hard work, we offer a great network where people are willing to share and help other in-house counsel with any IP issue they may be having. From my perspective, most ACC members are from small law departments and they are trying to handle a wide variety of issues and it is an absolute blessing to be able to pick up the phone and speak with an expert who can lead you in the right direction. I am so thankful that I have been able to help others and have also been able to partake in receiving some of that knowledge.
What substantive practice issues does your committee address?
IP is interesting because it includes so many different areas and most practitioners tend to practice in one specific area of IP. We cover trademark, copyright, patent, and trade secrets. We try to be very contentious of covering as many areas as possible. We cover everything from the filing process to case law developments to financial assessment of IP to international considerations. We have also met with the USPTO, presented advocacy positions to ACC, learned about advanced analytics software that provides new information about examiners or outside counsel, discussed fluid trademarks, considered trade secrets in terms of data security, and how the cloud is going to affect all of us. IP is expanding and is involved in just about every technology and different vertical of business. We try to present creative and interesting ways of learning about how IP affects all of us.
How has the Intellectual Property Committee helped you in your career?
I don’t necessarily look at how the IP Committee has helped my career, but I look at it as to how I can continue to give back to ACC for what I have received from both the local and national organizations. I wouldn’t be where I am today if it weren’t for ACC, so I’m always giving back as much as possible from helping with the IP Committee to participating in ACC Chicago Streetlaw. The committee and our sponsor, KT, has given me the opportunity to work with some of the greatest IP attorneys in the United States and abroad. It feels like a family and we are committed to giving back to our membership. Our committee is thriving because we have a large group of individuals who share this belief. I am humbled and thankful by the amount of work that everyone puts in as we continue to improve our committee and help our ACC community.
