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

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

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

Patenting for the Future: A New Approach for Innovators

The traditional patent model is configured to generate protection for an already completed invention. This, by definition, is a backward-looking approach and begs the question of why people are protecting what they have done in the past, when patents are supposed to be about protecting their future. Because strategy is about defining a desired outcome and working backward, an IP Strategist like me necessarily works with clients to identify why they are seeking patent protection in the first place. Only then do we develop a plan to achieve that business goal.

Experience shows that such forward-thinking strategies help innovators stay one step ahead of competitors by enhancing their ability to protect future revenue streams that are expected to occur with the introduction of innovative new products. When developing new products that customers will pay for in significant volumes, these innovators must “make it cheaper to go through them then around them. To do this requires a

Creating Business Value with Customer-Directed Patent Strategy

When you think about patents, you probably first consider who should be hired to protect ideas from competitors. When I think about patents, I think about what should be protected, and how it can be done efficiently and effectively. Unless you have this nailed down first, it doesn’t matter who you hire to help you, the end product will likely fall short of your goals.

In this regard, I’m more concerned about the client’s innovation story and how patentable concepts will benefit her customers. In short, I believe it is the customers we should focus on protecting, not just the product we are selling to them. While a bit more effort may be needed on the front end with this approach, my experience shows that taking a collaborative (and creative) approach to patenting allows my clients to generate strong protection more quickly, and at

How Companies Can Hit the Mark with Patents

As an IP Strategist, I’ve questioned time and time again why most patents fail to deliver the intended effect of bolstering long-term profits for their owners. I’ve concluded that too many patents read like diagrams intended for assembling products from separate pieces. This effectively means that the patenting process focused more on the structure of the product and not the functionality delivered. This is the opposite to what one needs to do: the customer buys the product’s function, not the structure. If you keep thinking and using the same ineffective patent strategies, you’re going to get the same results! I suggest you begin to think about patents from a different perspective to achieve the kind of success your company’s stakeholders will appreciate in today’s competitive market.

My approach to patents is different. Together with my client, we create patent protection directed to enhancing long-term profits to be generated by a company that successfully brings

Why So Many Patents Fail to Generate Expected Business Value and How to Fix the Problem

It’s not uncommon for me as an IP Strategist with over 20 years of experience to be contacted to provide a second opinion on a company’s patent portfolio. This generally occurs when clients aren’t totally satisfied with previous patenting activities because their attorneys failed to follow through on promises that their efforts would create meaningful business results. It’s typically easy for me to identify the mismatches between patents and value creation because I was an in-house IP lawyer for years after spending my early career at law firms. While in a law firm every patent had value to me because that was my business, in the corporate setting I learned quickly to focus on obtaining patents that mattered to the business. Emphasizing this perspective required me to ensure future patented revenue streams for my company—which was my only client--were well protected, as opposed to generating broad patents for many clients irrespective of the business goals of each of these clients,

Value Enhancing Patent Prosecution Strategies: Non-Publication of US Applications

The non-publication procedure for certain US patent applications is one of the most under-utilized tools in the U.S. patent strategy toolkit. After 20+ years of experience as a patent attorney, the non-publication process is one of my go-to strategies for clients who wish to start the process of patenting their innovations without also prematurely disclosing their “secret sauce” to their competitors, as would normally be the case when filing a patent application that will publish in 18 months after filing if the standard application process is selected. In addition to allowing the information in a patent application to remain confidential from prying eyes for a longer time, this can strategy pay dividends as the patent examination process becomes more challenging or if your company pivots. In this regard, if your US patent application does not publish, you may retain the right to add new aspects of your innovation for a longer period of time, while still retaining the filing date

Value Enhancing Patent Strategies: Accelerated US and Foreign Patent Timelines

My many years of experience as an IP Strategist working with countless clients helps me hone keenly my effort to assist clients in utilizing various patent strategies available to them, including how to buck the trend of long patent pendency that can create business uncertainties. In this regard, you probably know the traditional patent acquisition timeline is typically 2.5-4 (or even more) years from US utility application filing to issuance. For clients seeking protection outside the US, the time can be twice as long. 

The time for obtaining US and non-US applications can be greatly reduced through use of acceleration techniques made available in recent years. I have obtained dozens of US utility applications for clients using the “Trackone” process. Using this mechanism, these clients have obtained notice of issuance within 1 year. Moreover, I often find the examinations using this process to be more thorough, which often results in a “cleaner” review by the examiner,

M&A Failure: When Patent Due Diligence is to Blame

Analysts say that 70% or more of corporate acquisitions will be judged “failures.” I believe that many of these failures can often be attributed to the failure of conventional due diligence processes to suitably account for the participation in patents in predicting long-term financial returns for the acquired company. One reason for this is that the due diligence process moves quickly as deals need to be closed, oftentimes sacrificing robust investigation of complex issues, such as patents. Also, you can’t see something that you’re not aware of, and I know that many business people are not aware of the value that patents bring to a company that is creating innovative products and technology.  

Notably, rarely, if ever, is an after-the-fact analysis conducted of what happened to cause M&A failure. It follows that inadequate patent due diligence would likely never be seen to be the cause if this subject is not on the “radar screen” of M