Announcing a Great Event for Those Interested in IP Strategy in Europe

This week, I am using the IP Maximizer Blog to let readers know about an exciting upcoming IP Strategy event. My fellow IP Strategist, Jordan Hatcher, and his team at ipVA and colleagues at ExponentIP are working with Managing IP to provide a free webinar on IP Strategy in Europe on February 26, 2009 at 9 am EST. (I understand it is also going to be recorded.) I am very excited about this program because, as someone who advises on worldwide IP strategy, I am sure the insights provided in this webinar will elevate my knowledge and allow me to provide enhanced advice to my clients regarding IP protection in Europe. Some might wonder why I am so looking forward to learning more about strategic IP outside of the US, so I will give some background. By counting a number of many multi-national companies as clients in the course of my years as a patent prosecutor, I was fortunate to gain substantive experience in patent law in many foreign jurisdictions. (This is not necessarily common for US patent attorneys who tend to focus primarily on US clients or foreign clients needing US patent services to support their US operations.) Notwithstanding Continue Reading →

A Consumer Product Company’s Costly Patent Lesson: It’s Not Enough to Protect the Invention, the Innovation Must Also be Patented

A SVP at a large consumer products company recently expressed frustration that he cannot bring a patent infringement lawsuit even when his company holds 18 US patents (and many other foreign patents) on a product that closely resembles a competitor’s product. His annoyance is compounded because his company spent several years developing the product and technology covered by the patents. His company also spent several $MM introducing the product, which turned out to be a failure. The company removed the product from the market after several months, but the many patents remain in the portfolio today, and are still being maintained at considerable expense. I estimate that the patent protection for this failed product cost as much as $500K for patent coverage worldwide. Significantly, the product did not fail due to quality or performance issues. Rather, it failed because it was over-engineered and used many expensive ingredients, a fact which made the plastic product too costly for the target consumer market. The competitor’s knock-off product has been successful because they have removed much of the cost from the product by using less expensive ingredients, while still being able to maintain its desirable performance aspects. Of course, the SVP’s company provided Continue Reading →

Chief IP Counsel: Stop Trying to Change How Your Lawyers Bill You and Focus on the Model They Use to Provide Your Legal Services

As legal service fees continue to rise five percent or more year after year, corporate IP managers, such as Chief IP Counsel and the like, continually face pressures from their management teams to reduce outside counsel legal expenses. The current economic downturn has also resulted in corporate legal budgets being slashed, thus increasing the pressure on corporate IP managers to reduce outside counsel costs, even while IP asset value is becoming more important to C-level management. As a result, the need for corporate IP managers to achieve outside counsel fee relief while at the same time maintaining IP legal service quality is more acute than ever today. Today, there are a number of commonly accepted methods to achieve outside IP counsel fee relief including fixed (or “capped”) fee arrangements and a percentage reduction per total hours billed, as well as electronic billing systems set up to automatically audit law firm bills. For corporate IP managers, adoption of one or more of these methods certainly provides a perception of immediate relief. A corporate IP manager’s task of negotiating with his outside IP lawyers regarding legal service fees nonetheless amounts to nothing more than “pushing the same rock up the same hill” Continue Reading →