Intellectual property rights are widely understood to include patents, trademarks, copyrights and trade secrets. However, a fifth type of intellectual property right – that which is borne from a contract – is often overlooked in automotive supply contracts, which can have significant and adverse business consequences.
With respect to new developments, to be eligible for patent protection, a development must be, among other things, new, useful and non-obvious. However, these same threshold requirements for protection are not required for contractually borne intellectual property rights.
Anyone is free to take a public domain product and try to modify or improve upon it, and, under common law, intellectual property rights in those modifications or improvements are owned by the person who makes them. Of course, those intellectual property rights are meaningless if they cannot be protected or registered. In such cases, any alleged ownership in nominal modifications or improvements will not give any exclusivity.
However, consider a development and supply agreement that involves access to your proprietary technologies for purposes of creating a new product. It’s typical for such agreements to indicate that the party making modifications or improvements owns the resulting intellectual property rights. In those situations, the intellectual property rights are borne from the contract rather than common law or registration, and there are no statutory requirements.
As a result, the other party may assert that they own nominal modifications or improvements to your proprietary technologies. Indeed, the other party may seek to prevent you from commercializing their modifications or improvements – regardless of how obvious or nominal they may be. Even if the other party cannot commercialize the modifications or improvements without a license to your background intellectual property, they could try to prevent you from commercializing them with other customers.
For more information from Warner’s Automotive Industry Group, visit their webpage or log onto www.wnj.com.
Warner Partner Randy Peck is a patent and transactional attorney who helps automotive suppliers and other businesses fully protect and exploit their intellectual property in the chemical, mechanical and electro-mechanical arts. Having worked with automotive suppliers for over 12 years, he oversees all aspects of patent procurement globally. Randy also advises clients on a wide range of transactional licensing and supply chain work, particularly automotive supply chain agreements, terms and conditions or conducting the IP portion of the due diligence before a merger or acquisition.
Randy has worked with some clients for so many years that his work goes beyond a single product’s full life cycle, continuing through numerous product “generations.” His international experience spans Japan, China, South Korea and Europe, in addition to the U.S.
Randy is very niche-focused in his legal practice as are many of his Warner colleagues. Law firms often deploy corporate attorneys to advise on intellectual property components of contracts, terms and conditions and other agreements. At Warner, clients are assigned a technical team of intellectual property attorneys who have negotiated the same or similar issues with a supplier-OEM agreement. Randy shares: “We’re very focused in our work and know exactly what to look for. It makes us good at protecting our clients’ interests, especially when dealing with supplier contract negotiations involving OEMs.”
Randy was named a Top Lawyer in Intellectual Property and Patent Law by Dbusiness from 2019-present, is recognized as a Michigan Super Lawyers Rising Star in 2022, was selected among the Oakland County Executive 2018 Elite 40 Under 40 class and won the Client Choice Awards 2017 for Intellectual Property: Patents for Michigan.
Check out Randy’s full bio here
As we begin 2023, the OE supplier community is increasingly concerned that 2023 will be a continuation of the past few year – and the industry will not yet find the “new normal.” The industry has preserved through a numerous unprecedented issue during the past few years, including the global coronavirus pandemic, exploding transportation costs, numerous material shortages, labor issues, all while meeting the growing demand for new technology. These items weigh heavily on suppliers, and to frustrating many of them remain.
It is now time for suppliers to recognize that level of uncertainty and difficulty is the “new normal” for the industry. OE suppliers need to evolve their planning and operations to permanently account for a significantly increased risk level due to disruption and change. For many companies, this means rethinking product offerings, adapting business operations, and reskilling the workforce. For public companies, this also means educating board members and investors so they can better understand the new inherent industry risks.
Suppliers must not underestimate the magnitude of the changes necessary to be successful in this new environment. A business transformation of this scope requires a strong vision, consistent leadership and a collaborative effort from all parts of the organization. Regardless of your company’s many different internal processes, systems, and culture, a key element of success is a shared sense of the organization’s goals and direction, all while accepting a “plan B –or C or D” when the business situation inevitably changes.
MEMA and OESA are not immune to these changes. As such, we are realigning to better support the various vehicle supplier market segments that we serve. I invite you to click here to learn more. Additional details will be announced in mid-January.
OESA is excited to continue to serve the OE supplier community. We look forward to the new opportunities and challenges it will bring as we navigate the industry’s new norm.
As always, please feel free to contact me at 248.430.5963 or jfream@oesa.org.
Julie A. Fream President and CEO OESA
Diversity…Equity…Inclusion…Belonging. These terms have been used more and more in recent years, but why are they so important to the automotive industry? How does DEI fit in to companies where getting quality parts out the door on time is paramount to success… and survival?
The Center for Automotive Diversity, Inclusion and Advancement was founded because diverse talent had long been overlooked and undervalued in the auto industry. CADIA'S founder, Cheryl Thompson, started her career in the automotive industry literally washing dishes in the basement of the Ford WHQ building. Eventually she was recruited into a tool & die apprenticeship program and worked her way up to become a journeyman tool and die maker, an elected union official, and one of the very few women at the Ford Rouge Plant back in the day. She ended her long career at Ford as head of global Powertrain prototype.
Although she faced many challenges throughout her career, Cheryl had many mentors, advocates, and allies along the way. Not everyone is that lucky. There were – and still are – many Cheryls out there, talented individuals who do not have those same advocates, who struggle to fit in, find a path and see a future for themselves in this industry.
Without intentional effort to create a more diverse, inclusive, and equitable industry, we risk losing out on the talent that will help drive us forward. According to a recent Deloitte survey, 80% of respondents said that inclusion is important when choosing an employer. Companies who do not embrace diversity are risking even more – it has been shown repeatedly that that diverse workplaces are more creative, more innovative, and more profitable.
And THAT is why things like diversity, equity, inclusion, and belonging are so important to the automobility industry. To thrive and survive we must find, recruit and retain the best and brightest talent. It is up to us to create an industry where everyone feels welcome, valued and safe, and where every individual has access to the same opportunities.
Whether you and you company are already engaged in DEI efforts or are just beginning your journey, there are ways for you to make a difference. A great way to start is to connect with others doing this type of work to share best practices, insights, and resources. Remember that each action helps move the industry forward.
To find DEI connections in the automotive industry, consider the following peer networks:
CADIA DEI Roundtable Series – a monthly roundtable for DEI professionals and those who manage aspects of DEI for their companies. The meetings consist of best practice sharing, education, and open conversation.
https://www.automotivediversity.org/cadia-dei-roundtable/
CEO Coalition for Change – Automotive CEOs committed to taking action to make meaningful strides in diversity, equity and inclusion. The group's aim is to become a more inclusive industry, leverage diverse talent and better engage the workforce. Coalition members meet virtually on a monthly basis. https://www.automotivediversity.org/ceo-coalition-for-change/
MEMA DEI Council - MEMA'S Diversity, Equity, & Inclusion Council is committed to leading efforts to promote and enhance diversity and inclusion in the vehicle supplier community and is open to all MERA, AASA, HDMA, and OESA members. https://www.mera.org/councils/diversity-equity-inclusioncouncil
Click here to learn more and see page 5 for tomorrow's DEI event.
Dec. 6 | 11:30 a.m. - 11:30 | OESA Conference Center, Southfield, MI
The Motor & Equipment Manufacturers Association (MEMA) is pleased to announce the results of the industry’s 2nd annual Diversity Equity Inclusion (DEI) Barometer at the MEMA Operationalizing DEI event on Tuesday, December 6, 2022. Created in partnership with Center for Automotive Diversity, Inclusion and Advancement (CADIA), the DEI Barometer captures supplier sentiments and its pulse on diversity, equity and inclusion of the industry market segments: aftermarket, heavy duty, original equipment, and remanufacturing. Questions focus on DEI Strategy, Leadership Commitment, Talent Management, DEI Education, and more.
Ken Hopkins, President & CEO, Neapco Holdings, Inc. will kick off the meeting and be followed by a panel of DEI industry experts sharing their company’s insights, strategies, and best practices for operationalizing DEI at their organizations. Panelists include Amal Berry, Director, Global Diversity, Equity and Inclusion, Ford Motor Company, Dena Rantin LaMar, Chief Diversity, Equity and Inclusion Officer, Advance Auto Parts and Mary Mbiya, Director of DEI, AAM.
Following the panel discussion, the results of the 2022 DEI Barometer will be presented by Mike Jackson, executive director, strategy and research, OESA, and Cheryl Thompson, CEO and founder, CADIA.
Companies are encouraged to send at least one representative to this event. Results of the survey will provide companies with the state of DE&I within the industry and actionable insights to continue the conversation within their own organization.
MEMA is committed to helping member companies develop and promote DEI best practices through events, quarterly meetings and community outreach efforts and foster greater understanding and action within their organizations. The DEI Barometer supports that commitment.
OESA members and industry guests may register for OESA events at www.oesa.org For registration assistance, contact OESA at 248.952.6401 or info@oesa.org.
Dec. 7 | 8 - 11:15 a.m. | OESA Conference Center, Southfield, MI & Zoom
OESA invites industry executives, analysts and strategy professionals to attend the OESA 2022 Strategic Insights Executive Series on Recession Planning: Overcoming Inflation, EV Disruption and Market Dynamics on December 7, 2022. This executive briefing will provide actionable insights to contend with a range of market pressures. Attendees will gain intelligence from industry experts within areas of economics, vehicle sales and production forecasting, dynamic business planning and strategic consulting.
Gain rich insights into the U.S. economy and beyond from Dr. Cristina Benton, Director, Market & Industry Analysis, Anderson Economic Group. Learn how recession risks and inflation tripwires are impacting consumer and business sentiment, as suppliers plan for ongoing turbulence and future prospects for volume recovery.
Hear from Kevin Riddell, Senior Manager, Powertrain Forecasting, LMC Automotive, who will share a North American industry outlook along with rich global context. Discover the current state of supply chain pressures, new vehicle launch activity and strategic impacts from the pending surge of new EV entries.
Learn best practices from Pradeep Seneviratne, CEO, Campfire Interactive on ways to deploy internal analytics to prioritize program targets based on costing, pricing and quoting metrics that empower teams to achieve process breakthroughs.
Navigate industry headwinds to prioritize action planning in a low growth environment to maximize results. Gain robust insights from Bart Huthwaite, Principal, Operations & Supply Chain Practice, RSM US, LLP, on the importance of making forward progress despite market volatility by proactively empowering supplier teams.
Attendees will gain a deep understanding of planning priorities and competitive parameters to inform resource allocation strategies and better position their organizations for future success.
OESA members and industry guests may register for OESA events at www.oesa.org For registration assistance, contact OESA at 248.952.6401 or info@oesa.org.
Dec. 13 | 2 - 3 p.m. | Zoom
ESG reporting and goal setting has hit a crescendo with publicly traded companies. In this session, we will boil down the sustainability/ESG goals that major OEMs and Aftermarket Retailers have set for themselves and their suppliers. Foresight Management’s Mike Troupos will offer insights on the trends and differences among key OE and aftermarket customers.
We'll take a look at sustainability requirements from some of the leading customers including:
General Motors
Ford Honda Toyota Volvo
Auto Zone
Advance Auto Parts O'Reilly Auto Parts NAPA
Sustainability Hour, hosted by MERA, is a series of virtual sessions featuring experts in the field of sustainability. Sessions are open to all MEMA members.
For questions or assistance with registration, contact Cheryl Dry at cdry@mera.org.
Advanced Assembly Products, Inc.
1300 E. 9 Mile Rd. Hazel Park, MI 48030 www.aapincorp.com
Member Representative: John Clawson, Corporate Sales & Business Development Manager
Alternate Representative: Ravinder Sandhu, CEO/ President
HEVO
117 8th Street Brooklyn, NY 11215 www.hevo.com
Member Representative: Vic Peltola, Chief Commercial Officer
Alternate Representative: Jeremy McCool, CEO and Founder
Sanyo Corporation of America
26200 Town Center Drive, Suite 180 Novi, MI 48375 www.sanyo-trading.co.jp
Member Representative: Steve Jeske, President Jeske Group
Alternate Representative: Andrew Saito, Chief Coordinator
Spec Technologies Inc.
51455 Schoenherr Road Shelby Twp., MI 48315 www.spectech-us.com
Member Representative: Robert O’Neill, CFO
Alternate Representative: Patti Kelly, Office Manager
Tung Thih Electric USA CO., Inc.
46980 Liberty Drive Wixom, MI 48393 www.tungthih.com
Member Representative: Amy Chen, Vice President
Alternate Representative: Jeff Oquist, Business Development Manager
For OESA membership information, contact:
Steve Horaney
Vice President, Membership and Sales 248.430.5969 shoraney@oesa.org
Erin Schrieber
Senior Manager, Membership Recruitment and Development 248.430.5970 eschrieber@oesa.org
Adam Slaman Senior Manager, Sponsorship Sales and Membership Development 248.430.5958 aslaman@oesa.org
OESA and automotive industry expert Jason Stein have joined forces to present the Automotive Insiders Podcast hosted by Jason Stein. It covers a broad-range of industry topics and trends that are impacting the future of automotive
The podcast is available on Amazon Music, Apple Podcasts, Google Podcasts, iHeartRadio, Spotify, Stitcher, and Pandora. New episodes are featured weekly.
To subscribe and listen, click here.
Upcoming Events:
Dec. 6 Dec. 7 Jan. 4 Jan. 25
MEMA DEI Event: Barometer Results and Operationalizing DEI
Recession Planning: Overcoming Inflation, EV Disruption and Market Dynamics
Consumer Electronics Show Supplier Briefing
Warner Norcross + Judd Supplier Legal Trends
Mark your calendar for the Members-Only OEM Town Hall Meetings.
Feb. 6 Mar. 2
Stellantis Town Hall Nissan Town Hall - Save the Date
Dec. 1 Dec. 14 Dec. 15
Dec. 8
Chief Financial Officer Council
Sales Executive Council Chief Executive Officer Council Warranty Management Council
25925 Telegraph Rd., Ste. 350 │Southfield, MI 48033-2553 248.952.6401 │oesa.org │info@oesa.org Connect with us on
OESA N ews is provided by the OESA C ommunications Team.
April Buford Executive Director, Marketing & Communications 248.430.5964 abuford@oesa.org
Abby Napier Manager, Event Marketing and Website Management 248.430.5957 anapier@oesa.org
Katie Thomas Manager, Digital Marketing 248.430.5951 kthomas@oesa.org
