IP Monetization - IP Asset Maximizer Blog

Hey “Patent Experts”: How Do You Like Groupon’s Patent Now? Crickets

March 1, 2013March 8, 2019 by Jackie Hutter, IP Strategist

Yesterday's announcement of the firing of Groupon's CEO and the hope for a rebirth of the company's business model brought to mind a post that I wrote a couple of years ago railing against the self-interested opinions of "patent experts" on why Google offered $6 Billion for Groupon in late 2010. Re-reading the post in the rear-view mirror, it is more clear than ever that Google made the offer for the precise reason I set out below in December 2010:

Google, and other acquirers, buy business models, not patents. As we strategy-focused IP people have been saying for years, a patent is worthless unless it covers a viable business model–either yours or one you want to own. Google is interested in Groupon because it offers them an established business model in an area that fits into their long term business strategy. Are the patents nice to have? Of course,

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Google Changes the Game Again–This Time for Patent Owners and Those Who Serve Them

August 14, 2012March 8, 2019 by Jackie Hutter, IP Strategist 5

Patrick Anderson of the great Gametime IP blog reported the details of Google's new prior art searching tool*. This is such important news, I thought it important to repeat it in a separate post. Patrick provides detailed instructions for how to use the Google patent searching tool, and I will not repeat that information here. This post provides commentary on why I think this is a very good development for the patent world. Google's original announcement on its blog is here. It does not appear coincidental that Google is upgrading its patent searching capabilities: in this press release from June 2010 we are informed of the partnership between Google and the USPTO to increase the amount of US patent information available to the public. When used correctly, Google's tool can help "democratize" the patent analysis process

Want to Know More about IP Strategy? A Selection of Posts for In-House and Outside Counsel

September 20, 2010September 21, 2010 by Jackie Hutter, IP Strategist 1

This week, I am speaking at the Midwest IP Institute. I will be participating in a "fire side chat" with my good friend, Edna Vassilovski of Stoel, Rives LLP. Our session is entitled "How Patent Prosecutors and In-House Counsel Can Provide Work Product Better Aligned with Client's Business Needs." Specific topics we will discuss include:

How clients’ views of IP and intangible assets are changing and ways both inside and outside counsel can stay relevant to clients today;
What you can do to help clients obtain meaningful patents at reduced cost;
How to really understand clients’ business goals and how to help make those happen; and
How to help clients monetize their patents

I am really looking forward to sharing my passion for IP business strategy with in-house lawyers and outside counsel, especially since I will be doing this with someone like Edna who I think

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

April 16, 2010October 7, 2010 by Jackie Hutter, IP Strategist 8

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

How to Improve the Performance of M&A: Determine Whether the Target Really Provides Durable Competitive Advantage

February 19, 2010 by Jackie Hutter, IP Strategist

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

Guest Blogger: How Patent Vulnerability Impacts Valuation by David Wanetick of IncreMental Advantage

January 24, 2010 by Jackie Hutter, IP Strategist 2

(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

Seeking to Sell Your Patent to a Big Company? Think About These Negotation Tips

November 3, 2009November 3, 2009 by Jackie Hutter, IP Strategist

Over the past year of so, I have become friends with Victoria Pynchon, an accomplished California litigator and ADR expert. She is a great source of information for people seeking advice in the area of ADR and negotiation, whether IP or otherwise.

Victoria has just posted some information that I think will be of great use to any entrepreneur or start up that is seeking to sell their patent(s) to a larger entity. Except for very rare circumstances, these IP owners will be at a significant disadvantage in comparison to the company to which it seeks to sell. This post, entitled "More on Bargaining from a Position of Weakness" should be the first step before any small IP owner approaches the possible purchaser to help them understand how to succeed in the typically highly uneven bargaining process.

Specifically, people or companies with IP to sell today are hoping

For Inventor of 21 Patents, Patent Troll Litigation Not Very Lucrative

October 28, 2009October 28, 2009 by Jackie Hutter, IP Strategist 4

Recently, I wrote a post on why I think that patent litigation is not a viable business model for inventors. Given a realistic deconstruction of the costs and possible damage awards, I concluded that, in most situations, it is not realistic for an inventor to presume that she will "hit the jackpot" by suing infringers and extracting settlement or damage awards. I obtained some pushback from this post, mostly from patent litigation lawyers, who contend that I am wrong in my view that patent litigation does not pay for inventors. Of course, everyone is entitled to their opinion, and I respect the views of others, however, no one who objects to my (somewhat) negative view of patent litigation as a business model, has provided me with numbers to discount my economic analysis of patent litigation. This recent post from The Prior Art blog entitled "Revealed! How Much Money a

The Coming Explosion of the Patent Monetization Market: Brought to You by Open Innovation and What Needs to Happen in Order to Speed Up the Process

October 21, 2009November 8, 2009 by Jackie Hutter, IP Strategist 5

This week, I got a call out of the blue from a very senior business development person at a Fortune 10 technology company "wanting to know more" about patent licensing and monetization. This was a bit strange: his company has literally dozens of patent professionals on staff, files 100's of patents a year and, as I found out, has 35 or so business people working on patent licensing and monetization efforts for the organization. So, why would he (let's call him "Bob") need to talk to me these topics? Certainly, there is a veritable army of highly-paid smart people to answer IP and patent questions at his beck and call, and I was interested in finding out what Bob sought to find out from me that he could not get from his own people. I was not surprised to find out that Bob did not want to learn more about buying and selling

A Patent Reality Check: Litigation Not a Viable Revenue Source for Most Inventors

October 18, 2009 by Jackie Hutter, IP Strategist 3

The ability of an intrepid inventor to strike it rich from a great idea seems to be embedded in the DNA of many Americans. Perhaps this view emanates from the presence of patents in the US Constitution, which could create a feeling that US citizens have an "inalienable right" to use patent protection to their advantage. Alternatively, people may perceive the occasional media reports of successful inventors and substantial patent litigation awards as a signal that patents can serve as a path to wealth for those with great ideas (certainly, this is the Hollywood view). In truth, however, getting rich merely from a patent is a rare occurrence--maybe not as low a probability as winning the lottery, but the odds are incredibly long that any person can make money from a patented idea alone. Think about it: if all it took was a patent to make someone wealthy, there would be

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