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Patent “Expert” Opinion on Reasons for Google Tender Offer for Groupon Reveals Fundamental Problems with IP Professionals

After several years of writing about how business leaders need to wrest control of their IP matters from lawyers, today brought a revelation that illuminated why this seems to be such a hard point to get across.  It should be a no brainer:  it has been shown time and time again that when a company aligns its IP strategy with its business strategy, value creation opportunities abound.  So, why is it so hard to get business people to sign onto something that is unquestionably in the best interests of their shareholders?  It's simple--patent experts wholly lack credibility with business people on these issues.  This lack of credibility is compounded by the fact that these experts are given a forum to trumpet these views through use of their firms' large marketing budgets, as well as by haphazard journalists who give them a forum to expound their self-interested views without counterpoint. To this

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Want to Know More about IP Strategy? A Selection of Posts for In-House and Outside Counsel

This week, I am speaking at the Midwest IP Institute.  I will be participating in a "fire side chat" with my good friend, Edna Vassilovski of Stoel, Rives LLP. Our session is entitled "How Patent Prosecutors and In-House Counsel Can Provide Work Product Better Aligned with Client's Business Needs."  Specific topics we will discuss include:

  • How clients’ views of IP and intangible assets are changing and ways both inside and outside counsel can stay relevant to clients today;
  • What you can do to help clients obtain meaningful patents at reduced cost;
  • How to really understand clients’ business goals and how to help make those happen; and
  • How to help clients monetize their patents
I am really looking forward to sharing my passion for IP business strategy with in-house lawyers and outside counsel, especially since I will be doing this with someone like Edna who I think

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Facebook’s “Trademark Bullying” Should Serve as an IP Strategy Lesson for Startup Entrepreneurs

This week, Facebook's trademark action against a small online teaching company has been all over the news.  In summary, Facebook contends that TeachBook infringes its trademark rights in the "Facebook" name because, presumably, the "book" part of the name is associated in the minds of the relevant consumer public with the now well-known Facebook brand.  Today, it was reported that Facebook is now trying to own the rights to the "face" part of its name. Most wouldn't be surprised that the word "book" is used as a part of the name of a multitude of products and services, which would make it appear that Facebook is using its resources to beat up on smaller companies.  The natural response from the layperson is "why is Facebook being such a trademark bully?"   But to someone with experience in IP strategy, the business reasons behind Facebook's actions are clear. From a legal perspective,

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How the Northeastern Indiana Amish Serve as a Business Lesson about Patents

I have been spending time in Northeastern Indiana--the land of my roots--to introduce my children to their aunts, uncles and many, many cousins.  Catching up with extended family has made it difficult to formulate a post in the past couple of weeks, but I have a few moments this morning and wanted to capture a thought that has been rattling around in my head since I arrived here. Anyone who has spent time in this part of the U.S. will be familiar with the presence of the Amish as part of the cultural landscape.  My children, as city kids, are fascinated whenever they see a carriage with families traveling along the side of the roads.  However, I invariably consider about how stifling I would find it to not be able to interact with the outside world in the way that is familiar to me.  In short, I wonder what it

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Patent Information is a Necessary Calibration Tool: How the Pilgrims’ Journey is a Metaphor for the Innovation Process

Regular readers of this blog will recognize that I am a strong advocate of the use of patent information in the front end of innovation processes.  (More on this here, here and here.)  Relatively few innovation professionals actually do so, however, likely because it can be difficult for innovators to understand how to change the longstanding paradigm where lawyers are perceived to be the people who "put the 'no' in innovation."  Put simply, I find that innovation professionals prefer to leave anything smelling of legal advice out of the front end of their processes because they think they will not be able to do their jobs if the lawyers show up to their meetings. Of course, it makes little sense for innovation professionals to make significant business decisions involving new products or technology without also knowing whether they will be able to own the fruits of their innovations

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Much Ado About Patent Marking: Why It is So Hard for Corporations to Get It Right and Why False Marking Lawsuits Might be a Good Thing Overall

Misalignment between patent and business functions is the underlying cause of false patent markingIt is fairly rare for patents to make hit the radar screen of mainstream news outlets but, recently, there has been much space allotted to the issue of patent mis-marking and lawsuits being brought by third parties for "violation" of the law requiring that products cannot be marked with an incorrect patent number.  Indeed, the usually substance-free local paper in my mother's Southwest Florida community reported about the flood of patent mis-marking lawsuits.  And, it is no wonder that the undoubtedly arcane issue of patent marking has reached the status of "news" in a small-town paper given the huge number of cases currently pending in the federal courts.  It seems as if patent marking litigation may be the new business model for trial lawyers who are

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Innovation Professionals–Take Charge of Patents to Ensure ROI of Your Efforts (includes a case study)

Recently, I have been spending considerable time working with innovation professionals to demonstrate the value-creation opportunities available by embracing IP strategy as an aspect of their processes, and why patent drafting should be an aspect of their roles and responsibilities.  More specifically, my efforts have focused on why and how patents matter to the ROI of corporate innovation today.  Most business people would likely acknowledge that patents are important to protect their products from competition, however, the vast majority of the innovation professionals whom I meet have no idea how critical patent strategy can be to the success of their business plans. Modern innovation processes typically start with identification of a consumer need or the like.  In so doing, the innovation team undertakes detailed research to draw dimension around a product that will solve this consumer need.  This research will be directed toward identifying the multiple ways the consumer need can

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Checklists Could be the Key for Managers to Understand Whether Their Company’s Patents are Worth the Paper They’re Written On

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. 

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New Study Reinforces Value of Patents in Venture Capital Investment

Regular readers of the IP Asset Maximizer Blog will know that I am a strong advocate of the use of IP analytics by venture capital investors, as well as others.  Clearly, VC's need better ways to gauge the appropriateness of an investment when more than 50% of venture investment is a loss. My point of view is based on personal experience with various clients, as well as external review of a few investments that I thought signaled that a review of the IP landscape should have been conducted prior to completing the deal.  So, I was glad to see my opinions backed up by real data.  Specifically, my friends at IP Vision, a patent landscaping and data company originally out of MIT, conducted an extensive study of 9,000 venture backed firms.  The study was done with investors, corporate executives and members of the faculty at MIT Sloan

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A New Framework for IP Strategy Conversations: Ex Post vs. Ex Ante (from IP P®OSPE©TIVE)

(Editorial Note:  I have gotten some great feedback from my recent post 9 Out of 10 Patents are Worthless:  Here's Why and How to Keep it Happening from You (Part 1 of 4).  I am working on the next installment, so be on the look out for more of my thoughts on this meaningful topic.) Readers of the IP Asset Maximizer Blog will probably enjoy this very smart post from Ian McClure of IP P®OSPE©TIVE entitled "A New Legal Landscape for IP:  Ex Ante will Join Ex Post Services".  (While the post says some very flattering things about me, this is not why I am recommending it:  the IP P®OSPE©TIVE blog is consistently good, and Ian "gets" IP business issues.)  In this post, Ian frames IP Strategy in terms of "ex post" and "ex ante"--that is, instead of dealing with IP issues after it exists (i.e., ex

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