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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

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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

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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

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Startup Patent Licensing: Beating the Long Odds

Long odds for patent licensingAchieving meaningful revenue through licensing by startup entrepreneurs can be for all intents and purposes a “unicorn event:” much discussed, but rarely achieved. Notwithstanding this reality, a significant number of startup entrepreneurs who seek to engage me for IP Strategy and patent development consulting assert confidently that their necessity for a patent is based on a business strategy of licensing (or selling) their protected product or technology to an established company. This is not surprising because it is embedded in the DNA of much of society that “if you build a better mousetrap, the world will beat a path to your door.” Late night infomercials featuring famous people and entrepreneur “hero stories” in the press also bolster this conviction. It is certainly heartwarming and inspiring to believe that an "Average Josephine" can become rich solely on

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Startup Patent Strategy: US Patent Non-Publication

The TakeawayFor startups whose development efforts lag behind a looming US utility application filing deadline, use of the “Request for Non-Publication” in US patent filing can allow them to preserve the option of shoring up their patent protection for an extended period in the future, while still retaining the priority date of a provisional application filing. This can be valuable for startups that are still fleshing out their product/market fit in customer discovery, but that also have incorporated still relevant technical and functional subject matter in their provisional application. As people even modestly familiar with patents are aware, the filing of a provisional patent application requires followup with a US or PCT utility application that “perfects,” the earlier application no later than one year from that filing date. When the covered technology is fairly well-developed

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Need Broad Patents Fast? Try This.

Sieze the day: take your patent allowance!That title got your attention, didn’t it? It was meant to. After another successful round of patent application examinations for several clients in the last year, I thought others would like access to my proven patent acquisition methodology. Certainly, there’s a lot more than I can include in this post, and what is presented here should be considered to be only a high level introduction to my process. Moreover, every client requires focused attention to generate the desired patent protection, and not every business scenario mandates this comprehensive approach. But, for those situations where company leadership determines that strong patent protection is a key to achieving the desired business outcomes from investment in innovative products and technology, this methodology is not only recommended, it is required for success. Put simply, if you do the hard work

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Value-Enhancing Patent Prosecution Strategies (Part 1 of 4)

easy pictureIn my role as the IP Strategist for a number of companies that do not employ in-house patent counsel, I am charged with making sure that my clients’ patenting efforts are in tune with their desired business outcomes. This means that instead of focusing on the drafting and prosecuting of patent applications that form the basis of most patent attorneys’ practices, I work at the front end of the patenting process to design patent strategies that will enhance my clients’ business value first and foremost. When alignment is created with business goals, subsequent patenting efforts will necessarily result in protection that matters to the value of the company. In this regard, I have a number of tools in my “Patent Strategy Toolbox” that I deploy regularly when developing patent prosecution recommendations. Notably, when I mention these tools to new clients,

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UPDATE: Lack of Patent Strategic Focus Results in $100’s Millions in Lost Value

invalid patentLast week, an en banc Federal Circuit (that is, the majority of the sitting judges, not just the usual three judge panel), rendered a decision that saved the patent that keeps the ANGIOMAX(R) product from generic competition. In short, the Federal Circuit saved this successful blood thinner medicine from generic competition and, in so doing, saved the proverbial "bacon" of The Medicines Company. Since I wrote about this case about a year ago when the ANGIOMAX patent was invalidated by a three judge Federal Circuit panel for violating the US "on sale bar," I thought it prudent to update the post with this new information. The purpose of this post is not to summarize the new "on sale bar" rule. Many law firms and commentators have already done so. A good summary can be found here. In short, the law

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IP Strategy is Increasing Focus at Innovative Companies: Here’s Why

Introducing a new model for client focused IP legal services. IP Strategy is increasingly adopted by innovative companies today.After more than 8 years, I can report that IP Strategy is an increasing focus at innovative companies, and there is a solid reason why this is so. By way of background, for many years, I have been part of a small minority of IP experts who advocate that companies desiring to maximize the value of their IP investments re-think the way they seek and obtain patents. In short, I and my IP Strategist peers urge companies to wrest control of their “IP destiny” from their legal service providers who have traditionally been seen as the primary drivers of the patenting process for their clients. Of course, readers of my regular ruminations know that my strongly held view is that “the

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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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