New Podcast: Winning with Patents (and IP)

Season 1 of my new Winning with Patents (and IP) podcast is live. Six episodes are up on Spotify and Anchor.fm. In this season, I provide listeners with insights gained over my almost 25 years of experience in IP litigation, patent prosecution, licensing, innovation management, and startup counseling. Instead of talking about how obtain patents and IP, I provide actionable guidance on how your business can generate value from patents and IP. Moreover, I show how innovators, entrepreneurs, and business leaders can virtually guarantee that patents and IP that they generate will be aligned with their desired business outcomes.

In coming weeks, I will provide the transcript of each episode, so check back or subscribe here. In the meantime, reach out directly if you'd like to learn more about how to generate patents and IP that move the needle on the value

Fallback Image

Patent Expertise: Are You Selecting the Right Type?

There's an army of patent experts to choose from. Are you selecting the right one?

Companies looking for valuable patents should reconsider whether technical credentials are the best way to select a lawyer. Patents should be viewed as business documents first if the goal is to protect valuable innovation investment. When you engage a patent professional based on technical skills, you may end up with what I call the "mind-meld" that follows from two teams that share the same expertise. While the lawyer will bring legal skills that the client's technical team does not possess, it can be said that the overlap of skills not only makes one of the persons redundant, the commonality of interests often silos the effort in the technical aspects of the effort.

Notably, customers select a product because it

Fallback Image

Up Your Patent Game with a Referee

When two teams are working for opposite goals, a referee can make sure the game is played by the rules.

One-hundred % of patents make money for their lawyers, but very few--some estimates say 5% or fewer--make money for their owners. This disconnect is striking when you say it out loud, but few seem to recognize that it exists. Perhaps this is because it works very well for the "Patent Industrial Complex."

To this end, every intellectual property law firm has bills to pay, appearances to maintain, and risks to mitigate. This can certainly be tough to see when one is working to grow a successful legal practice, as I did in an earlier part of my career, but the thought did arise from time to time. A well-known IP lawyer I worked used

Fallback Image

Why You (Probably) Can’t Sell or License Your Patent

Potential clients frequently ask if they can successfully sell or license their patents; unfortunately, the answer is, far more often than not, “no.” Be it a cultural construct of “inventor exceptionalism,” repeated viewing of late-night infomercials by folks who like to tinker, or lazy journalism that elevates human interest stories about successful inventors over a deep explanation of the realities of generating business success, there exists a belief that “if you build a better mousetrap, the world will beat a path to your door.” The truth is that the only person who is guaranteed to make money from a patent is the patent professional that the client hires to get the work done for them. This topic is on my mind because I had to, once again, give bad news to someone who was expecting to monetize his patent rights that he believed

Fallback Image

Patent Lawyer Practice Models that Work and Don’t Work for Startups and Small Companies

Introduction As someone who works with a wide variety of startups and small companies as the in-house expert interfacing between outside patent lawyers, I have found it helpful to compare and contrast the various legal practice styles encountered, at least because I strive to continuously improve the IP strategy consulting services that I provide my clients. Recently, I have noted that there often appears to be a profound lack of alignment between the desired outcomes that my clients seek from their patent efforts and the business models of many of the lawyers we encounter. These lawyers seek to engage clients like mine, but often they are not able to provide the value we are seeking. Since I have been thinking a lot about this topic lately, I decided to write about my experiences because others may appreciate the context that I can bring

Better Patent Referrals: Tips for Non-Specialists

When seeking information about patents, clients often ask their business lawyers or their personal friends for referrals. However, just knowing a patent lawyer personally or by reputation should not be the reason that a referral to a lawyer is made—even if the person making the referral has a law degree. Patents can be critical for business success and, for some clients, specialized expertise is required to ensure the right result is obtained. In this regard, many clients need not just a patent, but a patent that creates business value for their company. Notably, this objective requires a keen business insight, something that is not in the wheelhouse of many otherwise competent patent practitioners. There are questions that a non-specialist can ask before she makes a referral to help her clients and friends meet their patent goals.

As an IP

Fallback Image

Startup Patent Strategy: Be Unbreakable

Several of my current clients are startup companies that understand that, to have real value, their patents must be seen by a third party as meaningful to the opportunity--be it customers, revenue stream, or any other business strategy--that this potential potential partner, licensor, or acquirer seeks to access. Put another way, patents generated by early stage companies that are developing innovative technology must “make it cheaper to go through them than around them.” For these types of patent owners, due diligence conducted by third parties is more than just “kicking the tires” of the patent portfolio; instead, their patents will be examined by an expert team to make sure they won’t "break" just when they’re needed most. As an initial aspect of this discussion, it should be stressed that not all patents are equal in value. Some patents--and, in my view, this is the

Enhancing Patent Outcomes: Designing Applications for Allowance

We all know the patent application process can cost $20,000 or more — and often much more. This alone should give those of us who obtain patents reason to pause and consider how we can and should do better relative to generating patent strategies for clients. Some of my peers will say that patent protection has more hurdles to overcome and requirements to meet today than in years past, and this contributes to the high cost. Certainly, this is true, but merely shrugging our shoulders and saying something akin to “I’m doing the best I can under the circumstances” is not a satisfactory option for clients who are relying on patent protection to enhance the value of their businesses. Instead, it is necessary to try something other than status quo patent strategies with a goal of getting better results for our clients.

While I

Fallback Image

Patentability Reviews for Innovations

Patent professionals can do a better job providing patentability review, or "opinion," services for innovators. As most readers would recognize, a patentability review assesses whether the invention to be claimed will meet the legal requirements for patentability. In the US, this entails an assessment by a patent attorney, which can be based on a formal or informal search, whether the client’s invention is novel and non-obvious over the prior art. The rules by which a patent attorney makes a determination of patentability are well-established and would not be considered controversial by most experienced practitioners. Nonetheless, as an IP Strategist who works exclusively with clients engaged in developing and delivering meaningful innovations to consumers, I know that these entrenched patentability assessment practices deserve retooling for those clients who can be classified as "innovators." To this end, I believe that the way the patent

Better Patent Services for Innovators: Patentability Reviews

For the past 12 years as an IP Strategist, I’ve worked exclusively with clients engaged in developing and delivering innovative products to consumers. From this unique vantage-point, I think it’s time for some entrenched patentability assessment practices to be retooled for innovators. I’ve come to this conclusion because many of the ingrained patent application development processes in my profession consistently fail to properly address the non-standard nature of innovators’ products and technology when assessing the scope of patent protection that can, and should, be recommended to help these risk-takers extract maximum value from their efforts.

An example of how strategic IP-thinking differs from that of traditional patent attorney processes is that I believe the unique nature of an innovative product or technology itself should serve as the focal point of any patent protection strategy. Presumably, the identification of an unmet need in the market