Free and Low Cost Patent Search and Analysis Tools: Who Needs Expensive Name Brand Products?

(NOTE:  At the end of this post is a detailed spreadsheet that lists the free and low cost tools that I use regularly in my IP strategy practice.  At the request of a group of IP strategy professionals with whom I network, I will be giving a presentation on these tools at a local event.  I thought that readers of this blog would also appreciate learning about how these tools can add high value at a low to minimal cost.) In private conversations, some of my corporate peers inform me that they pay $1000′s per year (or even per quarter for larger companies) for access to “name brand” patent search tools that nonetheless  do not contain accurate and up to date information.  For example, a client tells me that one of these expensive tools fails to update USPTO records on a portfolio her company is monitoring and that the PAIR data is more than 1 year out of date.  This limits the effectiveness of the expensive database by requiring her IP support staff to check each individual record on a regular basis to update the data.  Of course, this limitation defeats the purpose of spending the big bucks to engage Continue Reading →

Why the IP Law Firm Business Model is Broken And What I Am Doing About It

As a former IP law firm shareholder and senior corporate lawyer, I know all too well the expense required to start and maintain an IP law practice.  Not only are IP lawyers of all levels of experience paid handsomely, but so are the highly skilled paralegals, docket clerks and administrative professionals traditionally required create the infrastructure needed to handle the myriad of details involved in an IP law practice.  Of course, this expensive infrastructure must be sustaining, so while a lawyer serves today’s clients, her eye must also be on finding the next client because payroll and rent obligations don’t take a holiday when clients do. This “feed the beast” nature of the IP law practice model was a primary reason that I decided several years ago that I would not again work in the traditional practice of law.  How could I?  The standard legal service framework required me to build and maintain a business model where the product offered is obtaining patents for clients.  However, over the years I discovered that often the client does not need the very product that sustains the IP law firm business model.  What I perceived as an inherent conflict between my business interests Continue Reading →

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

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 by putting more power in the hands of those who are not part of the closed “guild” of patent professionals.  For example, before spending money on a search (and the opinion that most patent professionals will insist on writing to put context to the search), an inventor can herself get a feel for not just the patentability of her invention, but also Continue Reading →

Clients Save Money and Get Better Patents When Attorneys Use This Solution

As a “recovering patent lawyer,” I now realize that I wasted a whole lot of my clients’ money over the years because of the inherent inefficiencies that have been built into patent practice.  In this regard, I wrote about the money wasted by old fashioned patent filing systems in this post a while back, a fact which I think dictates that clients insist that their lawyers adopt electronic filing systems.  I have also written about the money wasted as a result of the inability of many clients to judge the value provided by their patent lawyers, which I believe is a result of information asymmetry. Another waste of money comes from the time needed to review patent filings during the drafting process.  The highly technical nature of patent application and claim drafting requires detailed review of an application on multiple occasions prior to filing.  Each review requires the time of the drafting attorney, who is often backed up by an attorney with an even higher billing rate, and the client pays for this time.   What the attorney is looking for in these reviews typically involves “fly specking” the application for insertions or omissions that could affect the scope and validity Continue Reading →

Patent “Expert” Opinion on Reasons for Google Tender Offer for Groupon Reveals Fundamental Problems with IP Professionals

After several years of writing about how business leaders need to wrest control of their IP matters from lawyers, today brought a revelation that illuminated why this seems to be such a hard point to get across.  It should be a no brainer:  it has been shown time and time again that when a company aligns its IP strategy with its business strategy, value creation opportunities abound.  So, why is it so hard to get business people to sign onto something that is unquestionably in the best interests of their shareholders?  It’s simple–patent experts wholly lack credibility with business people on these issues.  This lack of credibility is compounded by the fact that these experts are given a forum to trumpet these views through use of their firms’ large marketing budgets, as well as by haphazard journalists who give them a forum to expound their self-interested views without counterpoint. To this end, my realization was caused by a blog post from my friend Patrick Anderson, the proprietor of the great GameTime IP blog.  He posted an excerpt of an article in the National Law Journal, authored by Amanda Bronsted, where Patrick Arnold, a patent attorney at the Chicago law firm Continue Reading →

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

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 has a great grasp on client service from a business perspective.  In preparation for this talk, and for the benefit of those attending the the session who would like to learn more about my perspective, I thought it made sense to revive some previous blog posts from the past couple of years where I Continue Reading →

An Innovation Expert Sticks Up for IP Lawyers!

Regular readers of this blog know that I strongly believe that IP lawyers can do a whole lot more to better serve the needs of innovation teams.  Much of the disconnect between what IP lawyers do and those of their innovation clients can be traced to misalignment of incentives, as well as a structural and cultural impediments that makes it difficult for legal and business experts to communicate and work well together.  Last week, along with my good friend Deb Mills-Scofield and Mike Riegsecker of Menasha Packaging, I co-led a workshop on this topic at the 2nd Annual Open Innovation Summit.  The workshop was well-attended, and the response was very positive. Also, it appears that my message got through to at least one attendee, who is a prominent innovation consultant.  Keven McFarthing of Innovation Fixer wrote this post in which he asks open innovation professionals to not just look at their IP lawyer as an “extraneous irritant,” but instead as a member of the team.  Kevin also provides these recommendations: Ideally, make the lawyer a member of the formal team. If that can’t happen, treat them as if they are on the team. Don’t leave the final decision up to Continue Reading →

Corporate Business Leaders: Want to Create Value from Your IP? Stop Making it Your Lawyers’ Problem.

One of the biggest complaints I get from corporate innovation and product development professionals is how risk averse their lawyers tend to be about dealing with intellectual property (“IP”) issues.  It doesn’t matter whether these business people are talking about their outside or in-house lawyers, either.  To a person, the complaint generally tracks the contention that their IP lawyers “don’t get what they do” and, as a result, make it more difficult for them to meet the objective of adequately filling their product pipelines and introducing innovative new products that will keep the lights on at their corporations. I have written and spoken about this topic on several occasions.  But, recently, I have been thinking a lot about the issue of risk aversion and IP lawyers for a couple of reasons. First, I am co-leading a workshop at the 2nd Annual Open Innovation Summit next week in Chicago with my good friend Deb Mills-Scofield and Mike Riegsecker of Menasha Packaging.  In this workshop, we are going to discuss our experiences with corporate culture and incentives as these relate to achieving success in the world of Open Innovation.   Much of what I am going to talk about is how those seeking Continue Reading →

IP Lawyers: Enough about Bilski Already! Instead, Start Spending Time on Things that Create Value for Your Clients

Clear your calendars!  Bilski was decided just a few weeks ago, and already the schedule is filled with at least 3 Lunch and Learn seminars in the Atlanta area about “what Bilski means to your practice.”  If you can’t make these due to your Summer vacation schedule, don’t worry:  there are countless blog posts and “Urgent Practice Alerts” available, each of which reviews, abstracts and analyzes the case and its minutiae. Come on Folks:  at the end of the day (and after 70 + obtuse pages of reading), Bilski was a very narrow ruling.  We know what it means, and very few inventors will be affected by the holding.  This means that very few attorneys should do much more than read the abstracted case, and then move on. So, why are my IP lawyer peers spending so much time talking about a case that doesn’t matter much to our clients or practices?  Maybe it’s because the Supreme Court deigned us with their presence by hearing a patent case.  Whoo Hoo!  But, that’s like being really interested in Angelina’s new tattoo “that’s only for Brad.“  There I said it–fretting over Bilski is akin to Celebrity Stalking, IMHO.  In short, for most Continue Reading →

IP Strategist on the Radio: 2 Recent Interviews

As my consulting practice becomes ever more busy, blogging must be relegated to times when client work is not pressing–that ever-elusive free time.  But now that Summer is here, free time has been hard to come by–it’s hard to write when at the pool with the kids or driving to Grandma’s house–but I haven’t been totally giving up my outreach.  I recently participated in 2 radio interviews where I discussed the value of IP Strategy for entrepreneurs and inventors. Here I was on the 40 Year Old Business Virgin Radio Show with Dave Savage, Leader and President of The Inventors Association of Georgia and a person named Mohamed who has a really cool entrepreneurial story (sorry I didn’t get his last name).  The hosts of the show, Kile Lewis and Ted Jenkin, are irreverent business advisors, and you should enjoy the show.  (I appear in the first half).   They also made a short follow-up You Tube video (I had no idea I would appear on video and dressed totally inappropriately, but–oh well). I also appeared with Dave Savage on the Community Perspectives Radio Show (link here:  IAG Interview–opens to YouSendIt.com then your media player), along with Narayanan Subramanian.  In Continue Reading →