Response to WSJ Online Article: What Business Owners Should Know About NOT Patenting

Sometimes it is better for a business to NOT patent

Sometimes it is better for a business to NOT patent

Today, the Wall Street Journal Online published an article entitled “What Business Owners Should Know About Patenting“. In this article, Stuart Weinberg interviews James McDonough, an attorney at the well-respected Fish & Richardson law firm. Mr. McDonough gives excellent advice about the process of building an intellectual property portfolio.

However, he skips over a crucial first step–does building a patent portfolio really create long term value for your business? In many cases, the answer will clearly be “yes”. In many other cases, building a intellectual property portfolio could actually reduce or destroy your company’s asset value. By focusing his advice on the portfolio building step and later, Mr. Donough ignores the foundation on which your company should start the portfolio-building process.

First, an admission: I created a lot of value for myself and my law firm partners over the years by obtaining patents that did not ultimately create business value for my clients. I am not proud of this fact but, as a patent attorney, my job was to get a patent for a client if they thought they needed one. My job was not to tell them whether they needed a patent to support their business objectives. And, certainly if my client was willing to spend $10 – $30K for me to obtain a patent (which is the current cost estimated by Mr. McDonough), my assumption was that they had run the numbers and determined that a patent was a good spend for their business.

I now wear a different hat: as an Intellectual Property and Patent Business Strategy consultant (more info here: http://www.jackiehutter.com/), I do not create value for myself by billing clients on an hourly basis. Thus, I am able to look at intellectual property from a fundamentally strategic basis–does building an intellectual property portfolio create long term business value for my client? Unlike traditional patent attorneys, I can create value for myself by telling a client that they do not actually need a patent to maximize their business value. With all due respect to patent attorneys like Mr. McDonough, under the existing model of patent procurement, law firm patent attorneys cannot make a good living by saying “no”, even if it is the best business interests of their clients to do so.

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