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Patent Lawyer Practice Models that Work and Don’t Work for Startups and Small Companies

Introduction As someone who works with a wide variety of startups and small companies as the in-house expert interfacing between outside patent lawyers, I have found it helpful to compare and contrast the various legal practice styles encountered, at least because I strive to continuously improve the IP strategy consulting services that I provide my clients. Recently, I have noted that there often appears to be a profound lack of alignment between the desired outcomes that my clients seek from their patent efforts and the business models of many of the lawyers we encounter. These lawyers seek to engage clients like mine, but often they are not able to provide the value we are seeking. Since I have been thinking a lot about this topic lately, I decided to write about my experiences because others may appreciate the context that I can bring

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Need Broad Patents Fast? Try This.

Sieze the day: take your patent allowance!That title got your attention, didn’t it? It was meant to. After another successful round of patent application examinations for several clients in the last year, I thought others would like access to my proven patent acquisition methodology. Certainly, there’s a lot more than I can include in this post, and what is presented here should be considered to be only a high level introduction to my process. Moreover, every client requires focused attention to generate the desired patent protection, and not every business scenario mandates this comprehensive approach. But, for those situations where company leadership determines that strong patent protection is a key to achieving the desired business outcomes from investment in innovative products and technology, this methodology is not only recommended, it is required for success. Put simply, if you do the hard work

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IP Strategy is Increasing Focus at Innovative Companies: Here’s Why

After more than 8 years, I can report that IP Strategy is an increasing focus at innovative companies, and there is a solid reason why this is so. By way of background, for many years, I have been part of a small minority of IP experts who advocate that companies desiring to maximize the value of their IP investments re-think the way they seek and obtain patents. In short, I and my IP Strategist peers urge companies to wrest control of their “IP destiny” from their legal service providers who have traditionally been seen as the primary drivers of the patenting process for their clients. Of course, readers of my regular ruminations know that my strongly held view is that “the only person who needs a patent is a patent attorney,” and that, even for those companies for which patents are critically necessary, very

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Strategic Patenting: How To Get it Right (Guest Post)

Magnifying+glassThis article, by Francis Hagel, first appeared in Intellectual Property Magazine. It provides strong guidance, in checklist form, for those seeking to beat the odds that the patents they obtain will actually generate strategic value. Mr. Hagel is an IP strategy advisor from France. The article is reproduced with permission. "Suggestions for strategic drafting of patent applications" In the drafting of a patent application, a practitioner starts from a blank page[i]. He/she enjoys the greatest freedom for shaping its content on the basis of the information at hand concerning the invention, its context and the prior art of interest, within the constraints set forth by patent law in the country of filing, keeping in mind the specifics of patent law in the major markets for the invention. This freedom applies to all parts of the application : definition of the

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False Marking Lawsuits are Real Problem for Business and Make Little Sense When Applied to Expired Patents

The threat of false marking lawsuits has garnered much attention in the IP business press in the last couple of years.  Companies of all sizes have been hit with qui tam actions (that is, suits brought by an individual or company on behalf of the US government to right wrongs done to the government, not the individual) where the basis of the action is the mis-marking of a product with an incorrect or expired patent number.  Like a gold rush, these lawsuits have resulted in a number of legal entrepreneurs seeking out products that are incorrectly marked--usually by identification of expired patents, which is an easy thing to find--and their bringing suit against the offending companies.  Indeed, there were over 500 false marking lawsuits filed in 2010, making this cause of action seem almost like a

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Companies Adopting Open Innovation Must Incorporate Patent Information at the Front End

(Editorial note:  This is a repost from this blog over 2 years ago, but the content is more relevant than ever.  On January 20, 2010, I am participating in a Yet2.com webinar with Ben DuPont and Jason Lye where we will be sharing our thoughts about marketing technology to "non-traditional" technology buyers, many of whom come to the table because they are adopting Open Innovation into their product and technology development processes.  I thought this "classic" post would be a good overview for anyone of my viewpoint for those who find my blog as a result of this event.  For regular readers, well, I hope you enjoy this too.  I will post a link to the recorded webinar when it is available. ) Open Innovation is unquestionably becoming a “hot” area of focus for U.S. companies, especially in the current economic climate in which businesses are more

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False Patent Marking Lawsuit Update: A Tale of Successful Defense Strategy

In November, 2010, I wrote a blog post where I talked about a client who was sued for false marking, even though they had months before the suit changed the packaging of their product.  We subsequently obtained a good result with our litigation strategy, and I think others may benefit from this experience.  Moreover, I think it is important for we lawyers to share strategies for the overall benefit of our respective clients.  This is not done enough:  we legal experts all-too-frequently provide sagely advice from the comfort of our own siloed client experiences.  For the past 3 years as a blogger, I have been working to build a more public dialogue on IP strategy, and did not want to let this opportunity go by to let others know of a successful strategy in dealing with a false marking litigation.  (I feel comfortable sharing my experiences with this litigation,

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We’re Measuring the Wrong Things: Inventiveness and Patents Do Not Equal Innovation

Few things infuriate me more than supposed experts who make statements along the lines of "patents are critical to innovation."  I have avoided stating my views widely in this forum because I didn't want to get into a contest of one upmanship with my patent lawyer peers.  However, in the last couple of weeks, several pieces of information have hit my radar screen that make this seem like the right time to go public with my views. Let my position be very clear:  we create a false dichotomy when saying "innovation is not possible without patents."  The issue is much more complex and nuanced than this:  in a particular instance, patents may be critical to innovation, but they might also be only slightly important or--likely in the majority of situations--they might be wholly irrelevant to innovation.  (I talk more about this in this recent interview in Innovation Management

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GSU Corporate IP Roundtable on November 4 and 5: A Great IP Event at a Great Discount

Many of you who read my blog also follow my Tweet Streams when I am at conferences.  Last Fall, I blogged from the Georgia State University Corporate IP Institute.  Several people admonished me for not letting them know beforehand that the event was occurring, so this year I am giving everyone advance notice, as well as providing folks with the ability to attend using my discount code. The 2010 GSU Corporate IP Institute will be on November 4-5 at Georgia State University.  Unlike most IP-related CLE's, this event generally is light on the case law citations, and heavy on practical tips for those who view IP as a primary form of business value today.  (Editorial note:  if you are a case law geek, then this is not the event for you--but if you are a caselaw geek, why the heck are you reading this blog anyway?!) The

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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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