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

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

Protecting Valuable Innovations? Throw Out the Old Patent Playbook and Try Something New

In the usual situation, a patent attorney is the “ball carrier” for the inventor as a patent application moves through the Patent Office. Each “play” in the “patent game” is focused on getting a patent application to the goal line as the “win” of an issued patent. However, when the primary objective is on winning, the focus necessarily becomes the patent itself, not the reason why the “patent game” is being played in the first place. 

I have learned in my 20 + years as a business-focused patent attorney there is often a huge mismatch between the coverage of a patents and the business value that the patent creates for its owner. In other words, most clients look at the patent itself as a the “win,” and cannot articulate why they even played the patent game in the first place. When the patent is intended to protect valuable innovations, gaps in patent coverage and

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Product Companies Must Modify Patent Strategy When Adopting Innovation as Business Model

DEVELOPMENT-INNOVATION road sign  Product innovation requires a new patenting strategy.I recently finished an IP Strategy engagement with major consumer products corporation, where I interfaced with the head of New Product Development and Innovation Strategy. This company is embarking on a major shift in the way it brings products to market. In short, the company is transitioning from one that introduces new products with incremental improvements into the market on a regular basis, to one that focuses more on innovation. For this client, this strategy will mean that a significant portion of its product development efforts will be focused on solving unmet and identifying emerging customer needs, with the ultimate goal of introducing truly innovative consumer products that will be successful in the marketplace. I am sure that my client's new products will be found to be highly desirable to their consumers: the

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10 Key IP Strategy Insights for Innovative Companies for 2016 and Beyond

different-1163255-1278x903As 2016 begins, I am entering my 8th year(!) of writing about IP strategy insights from a business value creation perspective, both here on my IPMaximizerBlog.com and, more recently, on LinkedIn. While there were quite a few IP lawyers writing blogs in 2008, no one else was then writing about IP strategy. Today, there are even more IP lawyers writing blogs about IP law, but still almost none writing that address IP strategy topics that are meaningful outside of the IP monetization and large IP portfolio context. Over the years, it has sometimes seemed like I was the proverbial "lone voice in the wilderness" who speaks frankly (or as one of my regular readers said to me last year "bravely") about how innovators can take charge of their IP strategy to create value and reduce

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