I love meeting my online friends and collaborators IRL ("in real life"). If any of you are located in the Minneapolis area, please consider attending May 11, 2010 LES meeting where I will speak on collection and analysis of patent data. I am being sponsored by this event by my client Clyde Hanson of Venture Isles. Here is the information as circulated by Mr. Hanson: You are welcomed to attend the luncheon even if you are not a member. Ms. Hutter is an advisor to Venture Isles and we have worked together on many projects. She is a self-described “recovering patent attorney”, a prolific blogger and a sharp intellect so it will be a high-energy event. The food is by D’Amico has been consistently good. Save room for dessert. Please register at: LES USA/CANADA How to Properly Collect, Analyze
Jackie Hutter Speaking at the Minneapolis May LES Meeting
Much Ado About Patent Marking: Why It is So Hard for Corporations to Get It Right and Why False Marking Lawsuits Might be a Good Thing Overall
It is fairly rare for patents to make hit the radar screen of mainstream news outlets but, recently, there has been much space allotted to the issue of patent mis-marking and lawsuits being brought by third parties for "violation" of the law requiring that products cannot be marked with an incorrect patent number. Indeed, the usually substance-free local paper in my mother's Southwest Florida community reported about the flood of patent mis-marking lawsuits. And, it is no wonder that the undoubtedly arcane issue of patent marking has reached the status of "news" in a small-town paper given the huge number of cases currently pending in the federal courts. It seems as if patent marking litigation may be the new business model for trial lawyers who are
Innovation Professionals–Take Charge of Patents to Ensure ROI of Your Efforts (includes a case study)
Recently, I have been spending considerable time working with innovation professionals to demonstrate the value-creation opportunities available by embracing IP strategy as an aspect of their processes, and why patent drafting should be an aspect of their roles and responsibilities. More specifically, my efforts have focused on why and how patents matter to the ROI of corporate innovation today. Most business people would likely acknowledge that patents are important to protect their products from competition, however, the vast majority of the innovation professionals whom I meet have no idea how critical patent strategy can be to the success of their business plans. Modern innovation processes typically start with identification of a consumer need or the like. In so doing, the innovation team undertakes detailed research to draw dimension around a product that will solve this consumer need. This research will be directed toward identifying the multiple ways the consumer need can
Checklists Could be the Key for Managers to Understand Whether Their Company’s Patents are Worth the Paper They’re Written On
My friend Mary Adams of the Smarter Companies blog posted a brief article about Atul Gawande's recent book The Checklist Manifesto. I agree with Mary that checklists can be a powerful way to improve the work product quality of experts, and wanted to expand on her discussion as they relate to intellectual property, in particular patents. Also, I think that corporate managers who rely on the expertise of their company's patent lawyers can gain insights into the quality of their team's work product, even when they do not themselves seemingly hold the requisite skills to make such assessments just by starting a conversation about checklists. MY CHECKLIST STORY I read Dr. Gawande's original New Yorker article that formed the basis for the book at the same time I a good friend of mine--with whom I practiced law at a prestigious IP boutique--lost her corporate job in about December 2007.
New Study Reinforces Value of Patents in Venture Capital Investment
Regular readers of the IP Asset Maximizer Blog will know that I am a strong advocate of the use of IP analytics by venture capital investors, as well as others. Clearly, VC's need better ways to gauge the appropriateness of an investment when more than 50% of venture investment is a loss. My point of view is based on personal experience with various clients, as well as external review of a few investments that I thought signaled that a review of the IP landscape should have been conducted prior to completing the deal. So, I was glad to see my opinions backed up by real data. Specifically, my friends at IP Vision, a patent landscaping and data company originally out of MIT, conducted an extensive study of 9,000 venture backed firms. The study was done with investors, corporate executives and members of the faculty at MIT Sloan
How to Improve the Performance of M&A: Determine Whether the Target Really Provides Durable Competitive Advantage
Recently, I was asked to speak to a Georgia Tech MBA class about IP Strategy--specifically about the inter-play of IP in M&A. A significant portion of my talk addressed how poorly existing due diligence and IP metric methodologies traditionally perform to predict the financial success of M&A transactions. There is no question that improvements are needed in this regard. For example, in 2006, Inc.com reported that 60-70 % of acquisitions fail and more than 90 % of acquired businesses lose value. These somewhat dismal results leave no doubt that acquiring companies need better sources of information to properly vet and select acquisition targets. Having been involved in M&A transactions as a legal and business advisor over the years, I have developed unique insights on the the due diligence and IP metric processes from both sides of deals. In these deals, the highest (and presumably most expensive) advice of investment
The News is Out: We Now Have an Intangible Asset-Based Corporate Economy
(Ed. Note: A family emergency has been keeping me away from the office. The good news is that I have been catching up on my RSS feeds and reading some really interesting stuff, albeit a bit late. One of these interesting reads is a David Brooks piece dealing with corporate intangible assets. Since this was published Christmas week, others may have missed it, too. And, when pundits pick up on what you have been talking about for years, I means that the public is finally "getting" it!) David Brooks’ Op-Ed in the December 22, 2009 New York Times raises some interesting points about our new intangible economy. In this piece, entitled “The Protocol Economy,” Brooks recognizes that we have moved from an economy that makes “stuff” –that is, a physical goods economy—to one that deals in “protocols.” (I think it would be more appropriate to call our evolving intangible
Guest Blogger: How Patent Vulnerability Impacts Valuation by David Wanetick of IncreMental Advantage
(This week, David Wanetick, Managing Director of IncreMental Advantage provides readers if the IP Asset Maximizer Blog with an excellent overview of the various factors that he believes affect patent valuation. Please let me know if you would like to be a Guest Blogger.)
How Patent Vulnerability Impacts Valuation by David Wanetick of IncreMental Advantage As I often tell business leaders who attend my course on Valuing Early-Stage Technologies, valuing patents isn’t rocket science. It is much more difficult. Or to paraphrase Winston Churchill, valuing patents is a riddle, wrapped in a mystery, inside an enigma. Measuring even a well-delineated permanent entity is much more difficult than may be imagined. As Neil deGrasse Tyson (a renowned astrophysicist) and Benoit Mandelbrot (the father of fractal geometry) have discussed, no one really knows what the circumference of the coastline of the United Kingdom is. The tides will cause varying
A New Framework for IP Strategy Conversations: Ex Post vs. Ex Ante (from IP P®OSPE©TIVE)
(Editorial Note: I have gotten some great feedback from my recent post 9 Out of 10 Patents are Worthless: Here's Why and How to Keep it Happening from You (Part 1 of 4). I am working on the next installment, so be on the look out for more of my thoughts on this meaningful topic.) Readers of the IP Asset Maximizer Blog will probably enjoy this very smart post from Ian McClure of IP P®OSPE©TIVE entitled "A New Legal Landscape for IP: Ex Ante will Join Ex Post Services". (While the post says some very flattering things about me, this is not why I am recommending it: the IP P®OSPE©TIVE blog is consistently good, and Ian "gets" IP business issues.) In this post, Ian frames IP Strategy in terms of "ex post" and "ex ante"--that is, instead of dealing with IP issues after it exists (i.e., ex
9 Out of 10 Patents are Probably Worthless: Why and How to Prevent this from Happening to You (Part 1 of 4)
I decided to start 2010 with a controversial premise: what if 9 out of 1o patents--or 90 %-- issued in the US were worthless? Believe it or not, but this probably is not too far off the mark. By "worthless," I mean that it is likely that only 10% of patents in force today meet each (and every) of the below criteria:
1) The patent directly or indirectly protects a product or technology that is being sold in the market today;
2) The patent covers a product or technology where there is or likely will be viable competition in the marketplace such that a patent is needed to legally restrain competition; and
3) The patent owner is ready, willing and able to bring a patent infringement suit against an infringer or it is likely that your competitor believes that it will possibly do so.
Unless