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Startup Patent Strategy: Be Unbreakable

Several of my current clients are startup companies that understand that, to have real value, their patents must be seen by a third party as meaningful to the opportunity--be it customers, revenue stream, or any other business strategy--that this potential potential partner, licensor, or acquirer seeks to access. Put another way, patents generated by early stage companies that are developing innovative technology must “make it cheaper to go through them than around them.” For these types of patent owners, due diligence conducted by third parties is more than just “kicking the tires” of the patent portfolio; instead, their patents will be examined by an expert team to make sure they won’t "break" just when they’re needed most. As an initial aspect of this discussion, it should be stressed that not all patents are equal in value. Some patents--and, in my view, this is the

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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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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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“IP Strategy” is Meaningless without Desired Business Outcomes

"You can't sell me IP Strategy, Jackie," one of my top clients said to me recently when I sat down with him to conduct customer discovery for my IP Strategy practice. This client, a successful serial entrepreneur whose company has engaged me as "fractional Chief IP Counsel" for the last 1.5 years, swears by the services I provide to him--so much so, that he is a primary source of startup entrepreneur referrals that I obtain today. I was thus surprised that he didn't see my value as providing him with "IP Strategy," but as something else entirely. He said: "If I had to go on the record of why I value your expertise, it's because IP is important to my exit, and you look at IP differently than any other lawyer I have known. I know you're focused on creating value for my startup, so I want to keep you

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Companies Create Risk by Leaving IP Strategy Out of Innovation

missing personI recently had to give bad news to a new client, the CEO of a successful global electronic hardware company. This CEO hired me earlier this year to help ensure that his company's upcoming innovations, which were the product of a several year turnaround program, were protected from competitive knock-offs. I have completed a couple of projects for the company to date, and he now wanted to discuss IP protection for a new product for the European market that would serve as a platform for later product spin-offs both there and in the US. This new product incorporated a number of highly innovative features and almost certainly could generate broad patent protection. Unfortunately, however, I had to inform my client that his company's important innovation could not be patented in Europe because the product launch date occurred several months ago. While

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The Medical Device Patent Strategy Problem-Case Study

An IP Strategist like myself spends considerable time "Monday Morning Quarterbacking" patent strategy for medical devices and other inventions for the purposes of valuation, commercialization and otherwise. In this regard, I am frequently asked to review medical device patents to provide my opinion regarding claim coverage in relation to commercialization potential. Most of these reviews indicate that the medical device patent fails to create a scope of protection sufficient to justify the investment needed to fully realize the value of a new market opportunity. Alternatively, I will provide a "freedom to operate" opinion to a competitor that wishes to enter the market with a non-infringing alternative but which nonetheless leverages the key insights that formed the basis of the patented medical device innovation.

To this end, a medical device investor recently engaged me to conduct a preliminary review of a

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Do Startups Need Patents? Rigorous Study Presents Real Data on Startup Company Patenting Behavior

beautiful dataAs an IP Strategy advisor, I am often asked by the leadership of startup companies what the return on investment is from patenting.  While I can confidently provide recommendations as an expert, my opinions are anecdotal based on my almost 20 years experience as an IP professional.  Certainly, I have advised a number of startup companies over the years for which comprehensive patent coverage was critical to financial and market success.  On the other hand, I have advised a much larger number of startup companies over the years where patenting made little difference to their fortunes. The subjective nature of IP advice holds for other patent professionals.  Our respective years of experience results in tacit knowledge that becomes "expertise."   This expertise guides clients to us for advice and allows them to trust in our counsel.   Missing from my knowledge