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.
Checklists Could be the Key for Managers to Understand Whether Their Company’s Patents are Worth the Paper They’re Written On
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
Improve Your Chances of Obtaining a Patent at a Reasonable Cost and Time by Demonstrating the “Wow Factor” in the Application
A strong majority of people seeking patent protection to protect their products or technology leave the details the drafting process to their patent attorneys. That is, given the specialized (and, frankly, arcane) nature of the patenting process, even highly accomplished business professionals believe that a patent specialist (i.e., attorney or agent) is better equipped to understand how to best describe their invention to the US Patent Office (“USPTO”). This can be an ineffective way to handle the front end of the patenting process because it can result in the process being more contentious. Such contentiousness can result in narrower claims than desired and can make the patent take longer to issue and make the process considerably more expensive. In determining whether a client’s invention meets the legal requirements for patentability, a patent specialist thinks about how to legally distinguish the invention from those that have come before. Specifically, the patent specialist
Start-up Entrepreneurs & CEO’s: If Your Goal is Investment or Acquisition, You are Probably Patenting the Wrong Things
Do you treat your patents as a fence or a tollbooth? If you wish for your start-up technology company to obtain investment from or acquisition by a bigger player, you had better understand the difference. Most start-up technology company entrepreneurs and CEO's understand that patents can be key to establishing the value of a new business idea. Typically, entrepreneurs and CEO's such as yourself will engage patent attorneys to build an IP portfolio that protects the start-up's technology and products to the fullest extent possible. The motivation for this effort and expense is, of course, to to protect your start-up's idea from use by others. As management of a start-up you may be seeking to build an ongoing business around the patented technology, but often the goal of building a solid patent portfolio is to make your business an attractive target for investment or acquisition by a larger company. I believe that
Want to Obtain Patents to Protect You from Competitors Knocking Off Your Innovative Products or Technology? It’s Easy-Don’t Be "Selfish"
Recently the CEO of a start-up asked me for the most important advice I could give before she filed a patent application directed toward protecting her company's core technology. In response, I said "don't be a selfish patent applicant." Few patent applicants obtain such counsel from their advisers and it shows: the vast majority of patents are written from a selfish perspective. (Note that I am using "selfish," in the context that the term is used in marketing i.e., thinking that others see the same things in your product or technology as you do. When one selfishly markets her product or technology, she assumes that others will buy it for the benefits she sees, not for the reasons upon which consumers will base their purchasing decisions. So when I say that most patents are written "selfishly," I mean that applicants (both individual and corporate inventors alike) approach the patenting process with
Scott Garrison Guest Posting: A True Story of Wasted IP Assets & Why a Chief IP Officer Could Have Stopped the Loss
NOTE TO READERS: Since I am on vacation this week (well, sort of), I have asked my friend Scott Garrison to pen a piece about IP Strategy for me. He has been so gracious to do so, and the post follows. At bit about Scott: Scott Garrison is Chief IP Counsel and Assistant General Counsel for Scientific Games which, among other things, makes scratch off lottery tickets. Prior to joining SciGames, Scott was a senior IP attorney at Kimberly Clark and, prior to that, was a law firm patent attorney. Scott Garrison is a true IP Strategist and I am pleased to present him a forum to express his views on this blog. Scott's blog post: A short while ago I had an interesting conversation with an out of town acquaintance named "Mike" who works at a large international B2B ("business to business") corporation. I was interested to find out that his
An Introduction to Patent Monetization Resources for Corporations and Entrepreneurs
For corporations and entrepreneurs seeking to monetize their un- or under-utilized patent rights for the first time, it can be difficult to know where to begin. The patent monetization market is not yet mature and, as with other emerging marketplaces, no established methodologies and few experts exist to guide patent owners through the process. Today, there are as many as 17 different business models used to monetize patent rights. More will likely spring up as the market continues to evolve, even while some of the current models will certainly fall away. With such a range of options, it is not surprising that those seeking to sell their patent rights may be confused about what path to take. This blog post is intended to provide an overview of ways that a corporate and individual patent owners can most effectively monetize their patent rights in today's market. The models discussed in this article
How a Patent Strategy Focused Only on Obtaining the Lowest Cost Patents May Reveal a Company’s Future Inability to Remain Viable
Commentators like me frequently rail against what we view as the often unnecessarily high cost of obtaining patent protection. In truth, many patents are overpriced and provide questionable business value to their clients. Over-priced patents do not form the basis of this article, however. Instead, this is about the opposite phenomenon, i.e., under-priced patents. Specifically, in this article, I describe a company's desire to obtain low cost patents and what such a patent strategy may reveal about its long term viability. I was recently contacted by a large printer manufacturer ("PrinterCo" for the purposes of this discussion) to see whether I was interested in preparing patent applications for the price of $1300 each. This price seemed somewhat ridiculous to me because even the most "bargain basement" patent preparation prices that pop up on my Google sidebar advertising do not seem to dip beneath a threshold level of $2800. And, as a
If Your Company is Not Capturing IP-Related Tax Savings You are Likely Leaving Significant Money on the Table
I recently heard a group of tax experts spoke about issues related to intellectual property ("IP"), and since then I have been thinking about how my clients could benefit from better incorporating IP into their corporate tax planning and accounting processes. The topic is very complex and, as such, I will leave the details to the experts. (Feel free to contact me for recommendations in this regard.) I believe it is nonetheless valid to make the following statement: if your tax experts do not include IP issues in their tax planning and accounting processes, your company is likely leaving considerable money on the table. As these experts discussed IP-related tax issues, it became apparent to me how important IP asset management should be to corporate tax planning and accounting efforts. However, my experience demonstrates that few corporate managers are aware that such savings are possible. Even if they know about this