Monthly Archives: June 2009

IP Business Congress: Blog Summaries for Those Who Couldn’t Attend

IP Business Congress

IP Business Congress

The IP Business Congress (“IPBC”) was held on June 21-23 in Chicago. This meeting, established by IAM Magazine, brought IP business experts, both lawyers and non-lawyers, from around the world to discuss issues relevant to IP. If, like me, you were unable to attend, you will appreciate the blog authors who have thoughtfully posted their summaries and thoughts about the Congress. (If anyone comes across any more, please let me know and I will add them.)

Joff Wild: IAM Magazine Blog

Michael Martin: Broken Symetry Blog

Duncan Bucknell: IP ThinkTank Blog

Peter Zura: 271 Blog (Great overview of the NPE break-out session)

IP.com: Securing Innovation (Interviews with IP Hall of Fame Inductees)

Everything’s Negotiable: How Corporations Can Drastically Reduce Their IP Legal Costs without Sacrificing IP Quality

Corporate legal managers and the business teams they support complain seemingly constantly abmoney bag symbolout outside counsel expense, and intellectual property (“IP”) is no exception. And, why wouldn’t they complain when every dollar spent on legal representation is money that is effectively removed from the company’s P&L statement? This sets up an ongoing tension between corporations and law firms to reduce legal costs even while lawyers’ incomes have sky-rocketed in recent years.

For most corporate buyers of legal services, however, the ability to obtain substantive cost reduction has been somewhat limited due to the lack of transparent information available about legal fees. It may be even more difficult for corporate legal services buyers to gain meaningful reductions in IP costs because of the highly specialized nature of this area of law practice which, arguably, makes IP more of a “Black Box” than most areas. Moreover, regardless of the type of law involved, clients just don’t talk about what they pay for lawyers because of the confidential nature of the details underlying such information. In any event, even if they could share such information with their peers, the highly subjective nature of legal representation–IP or otherwise–would make cost comparisons between clients not particularly meaningful.

IP law firms have benefited markedly from the lack of pricing transparency. This effectively allows IP lawyers to set the baseline for negotiation on legal fees. If a lawyer thinks the market rate for her services are $500 an hour (and that’s what her peers are charging), any discounts or reductions take place from this starting point. In this context, a 10% discount would seem like a “win” for the client, irrespective of the actual business value of the work being done by the lawyer. In fact, value rarely comes enters the conversation between a lawyer and her client. Continue reading

Is There an Emerging Business Model for IP Lawyers’ Owning So-Called "Patent Trolls"? Only Until Their Corporate Clients Find Out.

Dennis Crouch of The PatentlyO blog recently posted an intriguing tidbit aboutCorporations are punishing patent trolls by refusing to feed them work about well-known IP attorneys Carl Moore (Of counsel at Marshall Gerstein); Timothy Vezeau (patent attorney at Katten Muchin); and Nate Scarpelli (who used to and still appears to be associated with Marshall Gerstein). These prominent members of the Chicago IP community appear to be “moon-lighting” from their respective law practices to act as managing partners at a patent holding company called “Virtual Photo Store LLC” (“VPS”). As reported in PatentlyO, VPS is currently involved as defendant in a Declaratory Judgment action.

Here is a copy of the DJ Complaint, also posted at PatentlyO. (Interestingly, the Complaint lists VPS’ address as that of the Marshall, Gerstein law firm.)The Complaint alleges that VPS is a non-practicing entity (“NPE”) owner of several patents that appear to be related to digital image processing. Mssrs. Moore, Vezeau and Scarpelli allegedly own a company that operates under a business model directed toward enforcement of patent rights alone. In other words, VPS is company in that does not actually make, use or sell a product covered by the claims of the patent, which gives rise to the “NPE” moniker. (Of course, NPEs are more pejoratively referred to as “Patent Trolls.”) It then follows that Mssrs. Moore, Vezeau and Scarpelli are managing VPS in its operations as an NPE, even while they are certainly concurrently representing large corporations that are the “victims” of NPE lawsuits.

Admittedly, these prominent Chicago IP lawyers are being innovative in seeking alternative business models to create value from their IP legal expertise and they are to be commended for doing so in this time of decreasing law firm revenues. One must also expect that their respective law firm partners have signed onto this business model and are, perhaps, looking to obtain some aspect of royalties that VPS might obtain from its endeavors to license its patents. However, I also wonder how happy their respective firms’ clients would be at learning this turn of events? Continue reading

News Items: IAM 250, IP Metrics Benchmarking Study and New Blog for Innovation Entrepreneurs

Regular readers of the IP Asset Maximizer blog will note that my postings have been a bit sparse lately. I have been taking some time off with my family, and will be continuing to do so until later in June 2009. I appreciate your patience. I have some timely news items to share in the interim, however.

IAM 250 Awards  logoiam

I am proud to announce that I have been named one of the IAM 250 for 2009. This award is given by IAM Magazine to those non-corporate IP Strategists judged by their peers as the leaders in IP Strategy. With Duncan Bucknell, Suzanne Harrison, Kevin Rivette, Andrew Watson and many others whom I respect greatly on the list, it is a great honor to appear on this inaugural list of the world’s leaders in IP Strategy.

IP Metrics Survey

Kate Shore of IPCapital Group let me know that her company has developed a benchmarking survey to assess how companies are using metrics and key performance indicators in relation to their IP portfolios and processes. Details are found in the IPCapital Group blog. The survey closes on June 17.

New Blog for Innovators

Over the past several months, the folks at Slingshot Product Development Group have referred to me a number of

Slingshot Product Development Group

Slingshot Product Development Group

 entrepreneurs who are seeking to introduce their new product ideas into the market. Slingshot works with corporations and entrepreneurs in all facets of product development, that is, from early stage ideation to manufacturing services. My services in this regard have effectively been in the realm of “IP Business Coaching.” Some of these entrepreneurs held viable ideas, but others I had to tell that their product idea could not be protected so as to make it likely that they would have success in the market. To a client, however, each of these persons obtained valuable insight into the overall market potential of their ideas as a result of my working with them to deconstruct their product idea into an analysis of the innovation they were seeking to address, as opposed to merely looking at their idea for its inventive aspects.

In the time that I have gotten to know the Slingshot folks, I have been impressed with their “out of the box” thinking about innovation, particularly how IP should fit into the process at the earliest stages. Put simply, Slingshot “gets” that patents don’t matter unless the product will sell, which is a depth of understanding about the patent process that other innovation professionals do not yet broadly process. Moreover, Slingshot understands that IP information can significantly enhance the product ideation process to result in greater overall ROI on innovation investment.

Given my positive experience with Slingshot, I gladly accepted their offer to cross-post relevant content to their new innovation blog, which will go live shortly. Readers of the IP Asset Maximizer blog will recognize the content at the Slingshot blog because it will also appear here. I am nonetheless pleased to have a new forum to spread the word about IP Strategy to those who do not normally interact with the world of IP. Those of us who are leading the way in spreading the word on IP Strategy understand that a significant impediment to broader implementation of asset-directed IP processes (as opposed to the traditional rights-based IP processes) is communication to those who need to know, that is, business professionals. I am looking forward to this new opportunity for dialogue with those who have the most to gain from implementation of robust IP Strategies within their respective organizations.