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The "Dirty Little Secret of Patents" is that Most are Worthless to Their Owners. Here is Why.

Notwithstanding the vast corporate and entrepreneurial resources expended each year to file, prosecute, manage and maintain patents, a significant majority end up having little or no business value to their owners. Patents can end up being worthless for any number of reasons, most of which center on the fact that the claims do not cover a product or technology either currently or in the future being made, used or sold by either the owner or a third party. And, when a patent does not cover a current or future product or technology, one might argue its only residual value is as the attractive government document on the right. No doubt exceptions exist to my bold assertion that most patents end up as worthless to their owners. That is why I used the

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The IP Zone: A New Concept for Introducing Needed Information and Efficiencies into the Patent Monetization Market

Many corporations and entrepreneurs today understand that patents are increasingly bought, sold and traded, just like many other assets. However, the patent monetization market is only just emerging and, as a result, few information sources exist today to assist patent owners in selling their patents. The nascent nature of the industry also means that most patent owners do not themselves possess the necessary expertise to successfully monetize their patents. Put simply, today, patent monetization is "easier said than done." In view of the challenges currently faced by patent owners seeking to generate revenue by monetizing their patents, I was intrigued to learn about the "IP Zone" to be established later in 2009 in the Harlem area of New York City. The IP Zone will be physically located at 125st Street and Lenox Avenue in the Upper Manhattan Empowerment Zone, which was established in the mid-1990's to provide enhanced job

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How a Patent Strategy Focused Only on Obtaining the Lowest Cost Patents May Reveal a Company’s Future Inability to Remain Viable

Commentators like me frequently rail against what we view as the often unnecessarily high cost of obtaining patent protection. In truth, many patents are overpriced and provide questionable business value to their clients. Over-priced patents do not form the basis of this article, however. Instead, this is about the opposite phenomenon, i.e., under-priced patents. Specifically, in this article, I describe a company's desire to obtain low cost patents and what such a patent strategy may reveal about its long term viability. I was recently contacted by a large printer manufacturer ("PrinterCo" for the purposes of this discussion) to see whether I was interested in preparing patent applications for the price of $1300 each. This price seemed somewhat ridiculous to me because even the most "bargain basement" patent preparation prices that pop up on my Google sidebar advertising do not seem to dip beneath a threshold level of $2800. And, as a

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Confessions of a Reluctant Convert to Electronic Patent File Management Systems & Why I Am Now a True Believer

For many years, vendors of office automation systems expended considerable effort trying to convince corporate and law firm patent attorneys to adopt paperless file management systems by touting the time and money savings associated with electronic files over the traditional patent file system. However, relatively few patent attorneys have done so, instead, remaining loyal to the traditional three-sided manila patent file folder. Until recently I was one of those patent attorneys. Now that I have discovered the vast efficiencies and improvements possible with these electronic systems, the question is why I remained true to this clearly outdated system of maintaining client patent prosecution records. Given the remarkable efficiency and knowledge management improvements possible with electronic patent file management systems, there can be no viable excuse for either corporate or law firm patent attorneys not to adopt such systems.In retrospect, I think I found that the heft and history represented by the

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Announcing a Great Event for Those Interested in IP Strategy in Europe

This week, I am using the IP Maximizer Blog to let readers know about an exciting upcoming IP Strategy event. My fellow IP Strategist, Jordan Hatcher, and his team at ipVA and colleagues at ExponentIP are working with Managing IP to provide a free webinar on IP Strategy in Europe on February 26, 2009 at 9 am EST. (I understand it is also going to be recorded.) I am very excited about this program because, as someone who advises on worldwide IP strategy, I am sure the insights provided in this webinar will elevate my knowledge and allow me to provide enhanced advice to my clients regarding IP protection in Europe.

Some might wonder why I am so looking forward to learning more about strategic IP outside of the US, so I will give some background.

By counting a number of many multi-national

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Chief IP Counsel: Stop Trying to Change How Your Lawyers Bill You and Focus on the Model They Use to Provide Your Legal Services

As legal service fees continue to rise five percent or more year after year, corporate IP managers, such as Chief IP Counsel and the like, continually face pressures from their management teams to reduce outside counsel legal expenses. The current economic downturn has also resulted in corporate legal budgets being slashed, thus increasing the pressure on corporate IP managers to reduce outside counsel costs, even while IP asset value is becoming more important to C-level management. As a result, the need for corporate IP managers to achieve outside counsel fee relief while at the same time maintaining IP legal service quality is more acute than ever today. Today, there are a number of commonly accepted methods to achieve outside IP counsel fee relief including fixed (or "capped") fee arrangements and a percentage reduction per total hours billed, as well as electronic billing systems set up to automatically audit law firm bills.

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Without Disruptive Innovation, Many IP Law Firms are Destined to Meet the Same Fate as Buggy Whip Manufacturers

A possible upside to the recent economic downturn is that many previously accepted business models are being revealed as in need of substantial reinvention or even total elimination. The billable hour/leverage law firm model for legal services is one of these increasingly maligned business models, and is now appearing to be in danger of ending up in the dustbin of history. Specifically, even those who benefit handsomely from the billable hour, such as the Cravath firm's many $ 800 per hour lawyers, now realize the fundamental irrationality of charging a client for time spent instead of value provided. This alone should signal that change is in the air. Notwithstanding the growing conversation about the need for alternative legal service billing methods, I fear that the majority of IP law firms will either try to ignore the desire for change or will respond by offering

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What is an IP Strategist? A Lawyer Who is Not Afraid to Say No

As a self-described "Recovering Patent Lawyer," I am now effectively an outside observer of the way the patent business is conducted in the law firm practice environment, and how corporate and other clients purchase patent legal services.  In this last year in which I have re-invented myself as an IP Strategist, I have come to firmly believe that the basic patent law firm business model contains a fundamental flaw:  outside patent counsel can make money only when they actually do work for their corporate clients.  As such, there is no value when a patent attorney (or her law firm partners) tells a client that he should not pay you for the attorney's expertise.  This necessarily sets up a tension between what the best interests of the law firm attorney and those of the corporate client.  

I do not wish to be thought of as criticizing the ethics of

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Confessions of a "Recovering Patent Attorney" and Why I Have Joined the Growing Ranks of IP Strategists

I often facetiously refer to myself as a "recovering patent attorney." This somewhat tongue-in-cheek phrase seems appropriate to my present professional state of mind because, after many years of drafting and prosecuting patents for clients of all sizes and degrees of sophistication, in the end, I became disillusioned with the way the patent business traditionally operates. Too often, I found that the patents I worked so hard (and was paid handsomely) to obtain failed to serve my client's business needs. In searching for the source of the disconnect between my efforts, the client's expenditures and the ultimate value of the patent to my client's business, I realized that those responsible for the client's business often did not participate adequately in the patenting process. Instead, at many organizations, inventors and patent attorneys served as the gatekeepers for most patent decisions. While the relevant client business unit typically held some say in patenting

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Do You Know Your Company Needs Strategic In-House IP Counsel, But Think You Can’t Afford It? One Company’s Solution is Hiring Part-Time Counsel

Analysts say that the current economic downturn will likely last at least until early 2010. While this no doubt seems like almost an eternity for the average consumer, for business strategic planning purposes, this date is just around the corner. Indeed, business managers at many companies are likely conducting “short term” strategic planning efforts targeted for introduction in mid-2010. This might account for the recent uptick in job postings for experienced corporate intellectual property attorneys. I see this increase in job opportunities as signifying that smart corporate leaders are realizing that sustainable business success requires companies to not only introduce innovative products and technology offerings, but also that they strategically protect such innovations. As a result, I believe that more companies will seek to hire strategic in-house IP counsel, which is good news for us IP types. Of course, the traditional model of hiring an in-house IP counsel results in