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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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2 Ways to Reduce Open Innovation Risk: Convert the Naysayers and Bring on the Seasoned Veterans

Open Innovation is risky.  It's like letting a stranger in your house to see what valuables are there for the taking, and letting them keep the key to your secrets even after you finish working with them.  For some, this perception of risk is enough to stop any attempts of Open Innovation in its tracks.  Other corporations respond to the risk by "lawyering up," which, at a minimum, markedly increases the costs of proceeding or, at worst, causes the relationship to break down before any collaboration can occur.  And I, as IP counsel to a number of corporations in my prior life, must admit to being responsible for shutting down Open Innovation due to my role as IP risk the person responsible for mitigating my clients' IP risk. After leaving the Friendly Confines of defined roles and responsibilities set out in my corporate and law firm life where it was clear

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Corporate Business Leaders: Want to Create Value from Your IP? Stop Making it Your Lawyers’ Problem.

One of the biggest complaints I get from corporate innovation and product development professionals is how risk averse their lawyers tend to be about dealing with intellectual property ("IP") issues.  It doesn't matter whether these business people are talking about their outside or in-house lawyers, either.  To a person, the complaint generally tracks the contention that their IP lawyers "don't get what they do" and, as a result, make it more difficult for them to meet the objective of adequately filling their product pipelines and introducing innovative new products that will keep the lights on at their corporations. I have written and spoken about this topic on several occasions.  But, recently, I have been thinking a lot about the issue of risk aversion and IP lawyers for a couple of reasons. First, I am co-leading a workshop at the 2nd Annual Open Innovation Summit next week in Chicago with my good

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IP Strategist on the Radio: 2 Recent Interviews

As my consulting practice becomes ever more busy, blogging must be relegated to times when client work is not pressing--that ever-elusive free time.  But now that Summer is here, free time has been hard to come by--it's hard to write when at the pool with the kids or driving to Grandma's house--but I haven't been totally giving up my outreach.  I recently participated in 2 radio interviews where I discussed the value of IP Strategy for entrepreneurs and inventors. Here I was on the 40 Year Old Business Virgin Radio Show with Dave Savage, Leader and President of The Inventors Association of Georgia and a person named Mohamed who has a really cool entrepreneurial story (sorry I didn't get his last name).  The hosts of the show, Kile Lewis and Ted Jenkin, are irreverent business advisors, and you should enjoy the show.  (I appear in the first half).

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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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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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The News is Out: We Now Have an Intangible Asset-Based Corporate Economy

(Ed. Note:  A family emergency has been keeping me away from the office.  The good news is that I have been catching up on my RSS feeds and reading some really interesting stuff, albeit a bit late.  One of these interesting reads is a David Brooks piece dealing with corporate intangible assets.  Since this was published Christmas week, others may have missed it, too.  And, when pundits pick up on what you have been talking about for years, I means that the public is finally "getting" it!) David Brooks’ Op-Ed in the December 22, 2009 New York Times raises some interesting points about our new intangible economy.  In this piece, entitled “The Protocol Economy,” Brooks recognizes that we have moved from an economy that makes “stuff” –that is, a physical goods economy—to one that deals in “protocols.”  (I think it would be more appropriate to call our evolving intangible

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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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9 Out of 10 Patents are Probably Worthless: Why and How to Prevent this from Happening to You (Part 1 of 4)

I decided to start 2010 with a controversial premise:  what if 9 out of 1o patents--or 90 %-- issued in the US were worthless?  Believe it or not, but this probably is not too far off the mark.  By "worthless," I mean that it is likely that only 10% of patents in force today meet each (and every) of the below criteria:

1)  The patent directly or indirectly protects a product or technology that is being sold in the market today;

2)  The patent covers a product or technology where there is or likely will be viable competition in the marketplace such that a patent is needed to legally restrain competition; and

3) The patent owner is ready, willing and able to bring a patent infringement suit against an infringer or it is likely that your competitor believes that it will possibly do so.

Unless

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Success in Innovation Requires IP Counseling on the Front End: Here’s How to Make it Happen

The 2009 Open Innovation Summit was held in Orlando two weeks ago.  The event was attended by corporate practitioners of Open Innovation, including people from P&G, GSK Consumer, Cisco, Whirlpool, J&J, HP (here are Phil McKinney's slides), Clorox, and many others.  Leading consultants in Open Innovation also attended, including Stefan Lindegaard of Leadership+ Innovation, Braden Kelley of Blogging Innovation and Robert Brands of Innovation Coach.  A number of vendors of services were there, too.  I thought this was a great knowledge share event, and a must do for folks wanting to learn more about Open Innovation.  Another Summit is planned for August 201o in Chicago. At the Summit, we spent much of the 3 days hearing how the attending companies, many of which include those in the Fortune 100, view Open Innovation as a critical aspect of sustainable growth and profits.  We also heard about