As an IP Strategy advisor, I am often asked by the leadership of startup companies what the return on investment is from patenting. While I can confidently provide recommendations as an expert, my opinions are anecdotal based on my almost 20 years experience as an IP professional. Certainly, I have advised a number of startup companies over the years for which comprehensive patent coverage was critical to financial and market success. On the other hand, I have advised a much larger number of startup companies over the years where patenting made little difference to their fortunes. The subjective nature of IP advice holds for other patent professionals. Our respective years of experience results in tacit knowledge that becomes "expertise." This expertise guides clients to us for advice and allows them to trust in our counsel. Missing from my knowledge
I spent a few days last week at the Innovation Cubed Conference in Orlando. While there, I heard two instances of use of a term that I absolutely hate, at least when it is used by innovation professionals to define in some manner the innovation processes of their respective organizations. This word is:
PATENT WHITESPACE ANALYSISNot only do I hate this phrase, I think that companies that utilize patent (or IP) whitespace analysis to define their product and technology development pathways are quite possibly setting themselves up for failure. And, it's bad enough that a single innovation project might fail as a result of the faulty data inputs that can occur from relying on whitespace assessments, but I think that most corporate processes incorporating patent whitespace analysis are based upon faulty methodology, thus setting the organization up for sustainable failure. For the uninitiated, when applied to the patent world,
Last week, I did what I these days rarely ever do: live in the world of corporate and law firm IP lawyers. I traveled to Minneapolis to speak at the Midwest IP Institute and, while there, I was treated to a baseball game in a luxury box, a high end hotel room with cocktails and hors d’oeuvres, a fabulous steak dinner and various other fringe benefits that I have not seen recently. It was clear to me that even in these trying economic times when law firms have folded and merged and lawyers have been laid off in droves from all sorts of law firms, many lawyers are still living the high life. I must say, I was somewhat surprised, because I thought business people were getting smarter about how they spent their money these days and, as a result, would not be impressed with fancy law offices and "bling"
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
Regular readers of this blog know that I strongly believe that IP lawyers can do a whole lot more to better serve the needs of innovation teams. Much of the disconnect between what IP lawyers do and those of their innovation clients can be traced to misalignment of incentives, as well as a structural and cultural impediments that makes it difficult for legal and business experts to communicate and work well together. Last week, along with my good friend Deb Mills-Scofield and Mike Riegsecker of Menasha Packaging, I co-led a workshop on this topic at the 2nd Annual Open Innovation Summit. The workshop was well-attended, and the response was very positive. Also, it appears that my message got through to at least one attendee, who is a prominent innovation consultant. Keven McFarthing of Innovation Fixer wrote this post in which he asks open innovation professionals to not just
Clear your calendars! Bilski was decided just a few weeks ago, and already the schedule is filled with at least 3 Lunch and Learn seminars in the Atlanta area about "what Bilski means to your practice." If you can't make these due to your Summer vacation schedule, don't worry: there are countless blog posts and "Urgent Practice Alerts" available, each of which reviews, abstracts and analyzes the case and its minutiae. Come on Folks: at the end of the day (and after 70 + obtuse pages of reading), Bilski was a very narrow ruling. We know what it means, and very few inventors will be affected by the holding. This means that very few attorneys should do much more than read the abstracted case, and then move on. So, why are my IP lawyer peers spending so much time
Anyone who has practiced IP law for a few years can attest to the transformations happening in the US Patent Office over the last year. In my opinion, Director Kappos is more than a breathe of fresh air over his predecessors, he actually knows what he is doing! Also, regardless of what one may think of President Obama's other policies and actions, one cannot question that his leadership is resulting in real attempts at innovation in the arguably previously moribund Patent Office. As a experienced patent practitioner, the last several years have been very demoralizing. I actually made the decision to stop working as a patent prosecutor because, quite simply, I became weary trying to educate junior examiners about the deeply nuanced intricacies of patent law. Worse was trying to explain to clients why their patent application covering an important commercial innovation could not get approved in the Kafkaesque environment of
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
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.
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