How to Make Sure Your IP Strategy Plan is Not Doomed to Failure

Smart business leaders understand today that IP Strategy should form a fundamental pillar of their value creation-directed business strategy. By taking a “business eye view” toward IP, forward-thinking corporate managers seek to capture the true value of their company, which today is increasingly measured in the form of intangible assets such as patents, trademarks, copyrights and trade secrets. If you have read this far in this post, you no doubt realize that your company must develop and execute on an IP Strategy in order to maximize intangible asset value. But, IP Strategy is only one part of the process of generating and maximizing this asset value. As an IP and Patent Business Strategist (more info here: The Hutter Group), I have found that even the most robust business-directed IP Strategy is likely doomed to failure if your company does not also establish an IP Culture within your organization. Put simply, as a manager responsible for the execution of your company’s IP strategy, you must work to destroy the “IP Expert” silo that likely exists today in your company. This silo consists of the designated “IP Experts” in your company who are typically R & D-oriented employees and your in-house IP Continue Reading →

How to Prevent IP Ownership Issues When A Corporate Strategic Alliance, Joint Venture or Open Innovation Project Fails

Technology-focused collaborations form a foundation of today’s corporate planning strategies. Such collaborations can be in the form of strategic alliances, joint ventures, open innovation or other legal structures. Regardless of how the participants characterize and legally structure such collaborations, the most common motivation for forming such alliances is to pool technology and R & D resources. When technology and R & D is involved, it must follow that IP ownership issues should loom large in the planning stage of the collaboration. However, my experience shows that the parties rarely give appropriate consideration to IP ownership in the agreements that are supposed to fully set out the rights and responsibilities of the parties. I can say with authority that IP issues are not usually given proper consideration in collaborative agreements because my expertise in this area results primarily from helping clients after their collaborations have failed. My clients typically sought my help after their collaborations went sour and they sought to exit the relationship with at least some valuable IP rights intact. In each of these situations, it was apparent that if my client had come to me for advice while they were executing the general business and financial parameters of Continue Reading →

Confessions of a Non-Recovering Patent Troll Enabler

I came across this TechDirt article: Exposing The Patent Troll Playbook… And How To (Almost) Beat It (h/t Ron Carson, VP of Marketing at Innovation Asset Group). This is an insider’s account of what it is like to be the victim of a so-called “patent troll”. Perhaps better than the article itself are the comments which make it clear how passionate people are about the topic of patent trolls. This is recommended reading, if just for the entertainment value of the comments. Reading the TechDirt article made me recall my time as a junior litigator at a well-known Atlanta law firm. As a very green (and tired) young attorney, I sent many “licensing offer letters” for the AudioFax Company. In this role, I was an enabler of a very successful patent troll. And, as set out in this post, I have continued to enable patent trolls throughout my more than 13 years as a patent attorney and intellectual property business strategist. The story of AudioFax is summarized here, albeit in softball form. In short, AudioFax’s owner, Mark Bloomberg, was an entrepreneur selling fax equipment in the 1980’s. Another company, F-Mail, received a patent on the technology that Bloomberg was selling Continue Reading →

Response to WSJ Online Article: What Business Owners Should Know About NOT Patenting

Today, the Wall Street Journal Online published an article entitled “What Business Owners Should Know About Patenting“. In this article, Stuart Weinberg interviews James McDonough, an attorney at the well-respected Fish & Richardson law firm. Mr. McDonough gives excellent advice about the process of building an intellectual property portfolio. However, he skips over a crucial first step–does building a patent portfolio really create long term value for your business? In many cases, the answer will clearly be “yes”. In many other cases, building a intellectual property portfolio could actually reduce or destroy your company’s asset value. By focusing his advice on the portfolio building step and later, Mr. Donough ignores the foundation on which your company should start the portfolio-building process. First, an admission: I created a lot of value for myself and my law firm partners over the years by obtaining patents that did not ultimately create business value for my clients. I am not proud of this fact but, as a patent attorney, my job was to get a patent for a client if they thought they needed one. My job was not to tell them whether they needed a patent to support their business objectives. And, certainly Continue Reading →

The Problem with Patent Due Diligence in Mergers and Acquisitions and How to Fix It

As a business or investment professional involved in mergers and acquisitions (“M & A”), are you conducting patent due diligence according to the standard practices of your M & A attorneys and investment bankers? When patents form a significant aspect of the value of the transaction, you are probably getting incorrect advice about how to conduct due diligence. The due diligence process must take into consideration the competitive patent landscape. If competitive patents are not included in your vetting process, you may be significantly overvaluing the target company. In my many years of intellectual property and patent experience (more info here:, I have been involved in a number of M & A transactions where patents formed a significant portion of the underlying value of the deal. As the patent specialist on these transactions, I took direction from highly compensated M & A attorneys and investment bankers who were acknowledged by C-level management to be the “real experts” because they completed dozens of deals a year. To this end, we patent specialists were directed to check the following 4 boxes on the patent due diligence checklist: Are the patents paid up in the Patent Office? Does the seller really own Continue Reading →

Technology Start-up Entrepreneurs and CEO’s: If Your Goal is Investment or Acquisition by a Big Company, You are Probably Patenting the Wrong Things

Do you treat your patents as a fence or a tollbooth? If you wish for your start-up technology company to obtain investment from or acquisition by a bigger player, you had better understand the difference. Most start-up technology company entrepreneurs and CEO’s understand that patents can be key to establishing the value of a new business idea. Typically, entrepreneurs and CEO’s such as yourself will engage patent attorneys to build an IP portfolio that protects the start-up’s technology and products to the fullest extent possible. The motivation for this effort and expense is, of course, to to protect your start-up’s idea from use by others. As management of a start-up you may be seeking to build an ongoing business around the patented technology, but often the goal of building a solid patent portfolio is to make your business an attractive target for investment or acquisition by a larger company. As an intellectual property and business strategist (more info here:, I believe that such an inwardly focused patenting strategy is a misguided approach for companies that wish to obtain investment from or be acquired by larger companies. Why do I think this? Let me use a simple analogy. Tweet This Continue Reading →