Tag Archives: IP Strategists

Value-Enhancing Patent Prosecution Strategies (Part 1 of 4)

In my role as the IP Strategist for a number of companies that do not employ in-house patent counsel, I am charged with making sure that my clients’ patenting efforts are in tune with their desired business outcomes. This means that instead of focusing on the drafting and prosecuting of patent applications that form the… Read More »

UPDATE: Lack of Patent Strategic Focus Results in $100’s Millions in Lost Value

Last week, an en banc Federal Circuit (that is, the majority of the sitting judges, not just the usual three judge panel), rendered a decision that saved the patent that keeps the ANGIOMAX(R) product from generic competition. In short, the Federal Circuit saved this successful blood thinner medicine from generic competition and, in so doing, saved the… Read More »

How Startup Patent Filing is Different

The prevailing view of patent experts who advise innovators–be they individuals or companies–it that patent filings should occur as early as possible. This advice, which is even more prevalent now that the US has moved to a “first to file” system, exacerbates the significant problem of worthless patents that I have written about previously. To… Read More »

Strategic Patenting Part 3: Why (Almost) Every Innovator Fails to Maximize Patent Value

The Take Away:  Those seeking to generate market-making patent coverage for new innovations must recognize that patent coverage should focus not on how the problem is solved but instead on the benefits provided to the customer.  Most patent coverage is directed to a specific solution to a customer need that is characterized in the form… Read More »

Do Startups Need Patents? Rigorous Study Presents Real Data on Startup Company Patenting Behavior

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… Read More »

Why the IP Law Firm Business Model is Broken And What I Am Doing About It

As a former IP law firm shareholder and senior corporate lawyer, I know all too well the expense required to start and maintain an IP law practice.  Not only are IP lawyers of all levels of experience paid handsomely, but so are the highly skilled paralegals, docket clerks and administrative professionals traditionally required create the… Read More »

Patent “Expert” Opinion on Reasons for Google Tender Offer for Groupon Reveals Fundamental Problems with IP Professionals

After several years of writing about how business leaders need to wrest control of their IP matters from lawyers, today brought a revelation that illuminated why this seems to be such a hard point to get across.  It should be a no brainer:  it has been shown time and time again that when a company… Read More »

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:… Read More »

IP Strategist on the Radio: 2 Recent Interviews

As my consulting practice becomes ever more busy, blogging must be relegated to times when client work is not pressing–that ever-elusive free time.  But now that Summer is here, free time has been hard to come by–it’s hard to write when at the pool with the kids or driving to Grandma’s house–but I haven’t been… Read More »

How the Northeastern Indiana Amish Serve as a Business Lesson about Patents

I have been spending time in Northeastern Indiana–the land of my roots–to introduce my children to their aunts, uncles and many, many cousins.  Catching up with extended family has made it difficult to formulate a post in the past couple of weeks, but I have a few moments this morning and wanted to capture a… Read More »