The missing technology piece
As someone who assists corporations and entrepreneurs in monetizing their patents, I am continuously on the lookout for potential technology buyers. To this end, I subscribe to a number of services that provide “wish-lists” of technology that others are seeking to acquire. The most notable of these are Innocentive.com and Yet2.com. Recently, I have seen a number of technologies on each of these websites that are possibly relevant to patents that I have obtained for clients over the last several years. While this could be a coincidence, I also think it could be a signal that more companies are dipping their toes into the Open Innovation space, as opposed to relying solely on internally developed products or technologies.
Patent attorneys seeking to improve the value they provide to clients would be well-served regularly reviewing the listings on these databases and spreading the word to their firm colleagues. Imagine the delight that clients would experience when their patent attorney brought them opportunity to make money on a technology that they no longer need, but have nonetheless spent considerable resources on over the years.
A word of advice, however. If the technology solution was readily apparent, the company listing the need would likely not have gone to the effort and expense to list it on Innocentive.com or Yet2.com. To be acceptable the solution will probably not just be “out of the box” but “out of the truck the box came in.” An example of such a solution is found in the Magic Eraser(R) story. Continue reading
One of the under-utilized aspects of available US patent data is the business information effectively “hiding in plain sight” in the U.S. Patent Office Assignment database. While it used to take weeks or months for assignments to be recorded, in recent years, the USPTO has implemented a very efficient electronic filing functionality that results in assignments being available for review almost immediately after being presented for recording. (This is arguably the most efficient process today in the USPTO.) Because most patent owners appear to avail themselves of electronic filing option when recording their assignments, one can find a wealth of information in the USPTO Assignment Branch.
To this end, I recently uncovered an intriguing tidbit of information related to the Automobile Bailout when performing a wholly unrelated patent monetization marketability study for a client. In confirming that a patent was still owned by General Motors, I cross-referenced the patent number in the USPTO assignment database. I found that in December 2001, the U.S. Department of the Treasury recorded a security interest in U.S. Patent Number 7,079,016. In April 2009, a further security interest was recorded in the same patent by Citicorp, “as agent for Hedge Priority Secured Parties.”
Digging a bit deeper, we find that the U.S. Department of the Treasury has recorded security interests in several hundred (perhaps a thousand or more) GM patents, thus establishing the U.S. Government as a significant player in the patent world. Still more digging indicates that these security interests were re-recorded apparently in total in the name of the Hedge Priority Secured Interests, thus indicating that this hedge fund is now also a significant patent owner, at least until GM declares bankruptcy or pays off its loans (more likely the former given recent reports). Continue reading
A good troll!
On his great 271 Blog, Peter Zura posted excerpts of the Chief Circuit Judge Michel’s keynote address at the FTC hearings on “The Evolving IP Marketplace” last December where Judge Michel addressed the state of patent law and patent reform. Anyone interested in patents, the USPTO and patent reform should take a look. I posted a comment on this post, and am reposting it here (with additions) along with Judge Michel’s comments about NPE’s as presented on the 271 blog.
Specifically, I was intrigued by Chief Circuit Judge Michel’s view that NPE’s (“non-practicing entities” also known by the pejorative term “patent trolls”) should not be viewed as somehow “illegitimate.” He apparently believes that by allowing those who are on the receiving end of NPE lawsuits to control the argument by “naming and framing” (my phrase) the problem as “trolls” is not helpful. Here is the excerpt of this part of his speech (again, thanks to Peter Zura of the 271 Blog for posting this–Peter’s emphasis removed):
Then the argument keeps shifting. Well, it’s not so much the number of infringement suits filed every year, it’s who’s filing. Well, why should we assume that a non-manufacturing patent owner shouldn’t be allowed to enforce its patent? What is wrong with a university owning patents based on research of its faculty scientists or research institutes or small inventors or small innovative companies that either can or don’t want to try to manufacture products themselves but license their inventions so others can make them? Continue reading
Recently the CEO of a start-up asked me for the most important advice I could give before she filed a patent application directed toward protecting her company’s core technology. In response, I said “don’t be a selfish patent applicant.” Few patent applicants obtain such counsel from their advisers and it shows: the vast majority of patents are written from a selfish perspective.
(Note that I am using “selfish,” in the context that the term is used in marketing i.e., thinking that others see the same things in your product or technology as you do. When one selfishly markets her product or technology, she assumes that others will buy it for the benefits she sees, not for the reasons upon which consumers will base their purchasing decisions. So when I say that most patents are written “selfishly,” I mean that applicants (both individual and corporate inventors alike) approach the patenting process with a focus on what they think are the important aspects of the product or technology, as opposed to what others will find innovative.)
A focus on the invention itself while drafting a patent application often means that the innovation is not adequately covered to prevent knock-offs by competitors. By “innovation,” I mean the technological or consumer problem that is solved by the invention which is why someone actually buys the product or technology embodied by the invention in the first place. When such an innovative product or technology becomes successful in the marketplace, a competitor will certainly seek to copy those features that make it “innovative.” But if the patent fails to properly cover the innovation, a competitor can mirror the successful product or technology with little fear of liability because the same problem can be solved using different design features than those set forth in the patent. Continue reading
Failure to treat your IP as a corporate asset is money flying out the window
While we can argue about the exact amount, without question, intangible assets form the majority of corporate value today. Matters involving IP are therefore predominately business issues, as opposed to legal issues or technical issues. For example, IP in the form of patents or trademarks (or both) frequently serves as a basis of the premium pricing that can be obtained from a differentiated product line. Also, IP directed toward a competitor’s technology can legally limit the ability of a competitor to expand its offerings, thus decreasing its ability to compete. There are many other examples of the business value of IP, all which when strategically obtained and managed can greatly increase the overall financial position of the corporation using IP as a business tool.
Notwithstanding the substantial dollars associated with corporate IP decisions, most organizations leave questions of IP in the hands of their legal and technical teams. Of course, many corporate IP professionals realize that this is an outdated view of IP management and that corporate asset value cannot be properly maximized by maintaining IP issues in the traditional legal/technical silo. These IP managers nonetheless often face considerable difficulty getting their business teams to pay attention to IP issues as they would other issues imbibed with significant financial ramifications. Continue reading