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Have a Pending US Patent Application? There’s Never Been a Better Time to Make a Deal with the Patent Office

The US Patent Office is in a deal-making mood.  Really.  Ever since Director Kappos told his examiners last Fall that "patent quality does not equal rejection," I have heard many stories about how patent applications that appeared to be stuck in the limbo 0f serial rejections are now being allowed.  Those of us who talk about such things online are in agreement that we may be operating in an unprecedented favorable environment of patent allowances.   The data bear out this anecdotal evidence:  patent issuances are up 35%  this year over last year. My sense of what is happening, which has been confirmed by other experienced patent folks to whom I have spoken, the perspective of the Patent Office has changed.  The consensus is the U.S. patenting process is much less adversarial today.  In recent years, examiners were effectively told by the Patent Office administration that "there needs to

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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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How to Improve the Performance of M&A: Determine Whether the Target Really Provides Durable Competitive Advantage

Recently, I was asked to speak to a Georgia Tech MBA class about IP Strategy--specifically about the inter-play of IP in M&A.  A significant portion of my talk addressed how poorly existing due diligence and IP metric methodologies traditionally perform to predict the financial success of M&A transactions.  There is no question that improvements are needed in this regard.  For example, in 2006, Inc.com reported that 60-70 % of acquisitions fail and more than 90 % of acquired businesses lose value. These somewhat dismal results leave no doubt that acquiring companies need better sources of information to properly vet and select acquisition targets. Having been involved in M&A transactions as a legal and business advisor over the years, I have developed unique insights on the the due diligence and IP metric processes from both sides of deals.  In these deals, the highest (and presumably most expensive) advice of investment

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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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Guest Poster David Boundy: A Detailed Examination of What the Proposed First to File Legislation Means to Business

(Editorial Note:  Last week, I posted my thoughts on the proposed changes to the US patent laws from a first to invent to a first to file system.  In response to my post, I received an exceedingly detailed and substantive comment from David Boundy, Vice President, Ass't Gen'l Counsel, Intellectual Property at Cantor, Fitzgerald.  (David wanted me to say that this post his personal view, and does not reflect the views of Cantor, Fitzgerald.)  David's viewpoint on what the proposed legislation will mean to business deserves a forum, and he has graciously allowed me to post his comment in total on the IP Asset Maximizer Blog.  Anyone who works with business to generate patent assets should be concerned about the proposed changes.) About guest poster David Boundy:   David Boundy has spent over a decade on Wall Street, first in several of New York's most prominent law

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Seeking to Sell Your Patent to a Big Company? Think About These Negotation Tips

Over the past year of so, I have become friends with Victoria Pynchon, an accomplished California litigator and ADR expert.  She is a great source of information for people seeking advice in the area of ADR and negotiation, whether IP or otherwise. 
Victoria has just posted some information that I think will be of great use to any entrepreneur or start up that is seeking to sell their patent(s) to a larger entity.  Except for very rare circumstances, these IP owners will be at a significant disadvantage in comparison to the company to which it seeks to sell.  This post, entitled "More on Bargaining from a Position of Weakness" should be the first step before any small IP owner approaches the possible purchaser to help them understand how to succeed in the typically highly uneven bargaining process.
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The NY Times is Wrong: Patent Auctions Do Not Provide Indendent Inventors with “Protection”

Patent auctions will do little to help independent inventors sell their patents
Patent auctions will do little to help independent inventors sell their patents
Those seeking ways to generate revenue from their patentable ideas will find the recent NY Times article entitled "Patent Auctions Provide Protections for Inventors," written by Steve Lohr, to be an interesting read.  However, as someone who works with entrepreneurs and corporations wishing to monetize their patent rights, I find it necessary to comment on the assertion that patent auctions can operate to "provide protections" for independent inventors, as well as the underlying premise that these it is generally possible for non-corporate inventors to generate value from their patent rights irrespective of the underlying subject matter of the patents.*  As an initial matter, the NY Times article states that "[independent inventors] can often find themselves in court, battling

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Interview on Legal Issues Related to Open Innovation and Open Innovation Summit Discount

OPEN INNOVATION INTERVIEW WITH BRADEN KELLEY I recently was interviewed by Braden Kelley of Blogging Innovation about the interplay between Open Innovation and the law.  For those interested in Open Innovation topics, Braden's blog is a great resource.  The link to my interview is here: http://www.business-strategy-innovation.com/labels/Jackie%20Hutter.html  Braden and I will both be participating in the Open Innovation Summit being held in Orlando on December 2-4, 2009 along with several other open innovation leaders, authors, and consultants.  I will be leading a panel currently titled: "Patents as Tools to Accelerate Innovation - How To Get Your Organization On the Right Path" September 18, 2009 is the last day for the $400 early bird discount.  You can get an extra $300 discount by using the code for Blogging Innovation readers can save an extra $300 by registering using the code - NXB458.