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

This 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 technical field, description of the prior art, statement of purposes, description of embodiments and results, claims. There are thus myriad decisions to be made.  Based on the understanding of the applicant’s objectives,  the practitioner can  ensure such decisions are in tune with these objectives. This is what can be called a strategic approach to the drafting of a patent application. Continue Reading →

Strategic Patenting 4: A Case Study of Success

The Takeaway:  In the 4th post in this Strategic Patenting Series, a case study is presented of a company that created durable market-making patent protection for a successful consumer product innovation using a disciplined patenting strategy. The strategic patenting efforts of Procter & Gamble undertook with its market-leading Swiffer Wet Jet® floor cleaning system allowed the company to create strong protection of the function of the basic product. This, in turn, resulted in protection of the underlying consumer benefits provided by this innovative floor cleaning system, a fact that allowed the company to prevent functional aspects of its system from being included in knock-off products.  Moveover, P&G leveraged its ongoing consumer insights to continue to grow its patent portfolio.  In short, the company’s successful strategic patenting efforts have “made it cheaper to go through them than around them,” thus contributing to its market leadership for this innovation for the past 15 years. The Long Story:  In a previous blog post in this multi-part Strategic Patenting Series, I explained how the vast majority of innovators fail to maximize the full scope of the value proposition of their innovations in the marketplace.  In short, the missing piece in most patenting efforts is Continue Reading →

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 of an invention.  Patents that cover only one solution to a broad customer need will permit competitors to solve the same customer need with a non-infringing substitute product, thus leaving the patent holder with no legal recourse against their competitor.  On the other hand, market-making patent coverage focuses on the benefits provided to the customer, which means that competitors cannot sell the same benefit.  Accordingly, patent coverage that emphasizes benefits over features will make it more difficult for competitors to provide the same solution to the customer.  Innovators must heed this warning or they will end up being one of the many examples of companies that innovated to successfully solve a consumer need but that did not successfully prevent others from competing in the same market. The Long Story:  As I discussed in a previous post in this multi-part series on Strategic Patenting, those of us Continue Reading →

Presentation: IP and Patent Strategy for Business Value Creation–The Good, The Bad and The Ugly

While postings have not been frequent in 2013, I have nonetheless been very busy with my IP Strategy counseling and speaking engagements.  In 2014, I will commit to being much more diligent in updating my blog with relevant content for those seeking to use IP and intangible asset strategy to create and maximize business value.  In the meantime, here is the deck from IP Strategy Overview I presented at a conference of innovators at Georgia Tech’s College of Architecture in October 2013.  The summary is below the presentation.  (To view the Slideshare presentation you view the full post in IP Asset Maximizer Blog.) [slideshare id=29609113&doc=huttergoodbaduglyipstrategypresentationoctober2013-140101073032-phpapp02] This deck includes the basic overview of IP (patents, copyrights, trademarks, trade secrets).  However, this presentation goes beyond the usual lawyer-generated content to highlight not only the positive business aspects of IP, but also to give a reality check as to the likely ROI of investment in protection.  Additionally, commonly overlooked forms of intangible asset business value are highlighted.  A case study of a poorly designed and executed IP protection strategy where a significant (and arguably disruptive) innovation is highlighted. Recommendations for business relevant IP and patent protection strategies to create and maximize business value Continue Reading →

Enhancing Innovation ROI by Adding Patents at the Front End: Some Resources

A new client has asked for some information on how consideration patents and IP at the front end of the innovation/product development process can enhance business value.  Readers of this blog might find this material informative, also. This is a published article from Innovation Management article entitled “How to Improve Innovation ROI with Early Stage Patent Expertise.”  In this article, I discuss how IP can help orient innovation teams in a direction that can enhance value capture.  Practical steps to implement such a program into innovation processes is included in this article. Here is a YouTube video that explains my process simply.  In short, including IP at the front end of a company’s innovation process allows one to enhance their calibration with respect to the IP rights of others to better ensure that they will achieve the desired ROI on innovation investment. This blog post describes how a large company failed to capture the full value of its deep investment in a new product innovation.  These folks (the name has been changed to protect the not-so-innocent) failed to grasp that their innovation was not a product, but a customer solution.  This first-to-market Fortune company did not understand that the customer Continue Reading →

Is Traction the New IP for Startups? Maybe Not for Yours.

“Traction is the new IP.”  This emerging mantra results in many startup CEOs eschewing the traditional path of patent and other forms of IP protection.  While I am aware of no rigorous studies conducted to date, anecdotal information indicates that startup entrepreneurs are increasingly saying no to patents, and likely to other forms of IP.  Instead, these entrepreneurs first seek to validate their business models and then follow business plans focused on generating recurring revenue, often avoiding altogether the step of protecting their business idea or product with IP.  From my own interactions with startup CEO’s, I can confirm that the pendulum has swung very far to the “IP is worthless” side of things.  But, is this emerging conventional wisdom actually correct? There is no doubt that over the years far too many startup company resources have been spent on patents and other forms of IP protection (many of which were paid to me in my former life as a patent attorney).  Moreover, if we were to track the number of patents held by successful startups and those held by failed startups,  a poor correlation would certainly exist between successful exits and the presence of IP protection.  An adherent to Continue Reading →

Lean Startup Methodology: How Patenting Decisions Fit into this New Business Framework

  One of the first questions start up entrepreneurs usually ask sounds something like this:  “Is it worth the effort and expense to get a patent on this business idea?”  In countless conversations with clients in my years as a patent attorney, I could usually articulate multiple reasons why the person seeking to to start a new business venture unequivocally needed to file a patent application as soon as possible.  Moreover, I could recite a litany of ills that could follow from failing to follow my advice.   Following this conversation, I could typically expect a fat check from the client, whereupon I would dutifully draft strong patent on the subject invention.  It was a nice living. These days, I work as a startup technology company CEO and look at patents much differently than I did in the past:  as a consumer of patent services myself, I now examine patenting issues from the vantage point of an entrepreneur, not as a lawyer whose business model centers on patents.  My viewpoint has been further honed in the last year as I have become a practitioner of the Lean Startup Methodology, a startup business framework that, in short, states that if an Continue Reading →

The Apple vs. Samsung Verdict Actually Demonstrates that Patents Do Promote Product Innovation

In the time that the Apple vs. Samsung patent fight has been underway, we have been inundated with an untold number of articles on how Apple is stifling innovation in the SmartPhone world.  (Haven’t seen these:  just do a Google search for “Apple stif . . .” you don’t have to type any more than this–the search auto-completes itself.) I often take a contrarian view from that stated by most “expert” commentators–be they members of the press or actual patent professionals, and the Apple v. Samsung verdict is no exception:  I think the result actually demonstrates that the patent system is working just fine in this instance, thank you very much.  But how can this be when Samsung got hit with more than a BILLION US DOLLAR jury verdict last week?!?  Doesn’t the fact that Samsung could not make a product without infringing Apple’s multitude of patents mean that Samsung is effectively prevented from competing with Apple in the Smartphone market? Not necessarily, as is shown by this great post from The Verge entitled:  “How Android has evolved while steering clear of Apple’s designs”.  What is most interesting to me about this article is how we see that while making Continue Reading →

Patents–Who Needs Them? Not Most Startup Entrepreneurs.

A recent article in TechCrunch indicates that entrepreneurs are less likely to file patents than in the past.   Nonetheless, there remain countless patent lawyers and agents who will argue convincingly that an entrepreneur must obtain a patent in order to succeed and who will take their $5-15K to file a darned good patent application that won’t provide them a bit of business value in the long run. Even worse, the resources expended in the patent process robs the entrepreneur of needed cash that will allow them to gain customers, and of their most valuable asset: time.  But when the only tool you have is a hammer, everything looks like a nail–which is why those still in the business of writing patent applications will continue to make their case to entrepreneurs (and investors) who lack the domain expertise to know better. Now that I no longer make money obtaining patents–instead, I am the CEO of a startup battery charging company–I understand that patents are generally a poor way for a startup company to expend scarce resources.  I rarely, if ever, recommend that my startup colleagues file for patent protection for any tech/web-based ventures. Further, when asked what they should do Continue Reading →

A Startup Company’s Experiences with Open Innovation-Part 1: Dealing with a Large Company Having Small Innovation Goals

For the past several months, I have been at the helm of Evgentech, a startup company with game-changing battery charging methodology.  Our technology was developed by young men who did not come from a traditional engineering background and, even then, their discovery was a serendipitous result of the co-founders’ recognition of a new principle stemming from investigations initially directed toward something wholly different from battery charging.  Put simply, Evgentech’s technology would not have been found if anyone–outsider or not–would have been looking for it.  We are now bringing to market the first truly new battery charging paradigm in over 100 years.  To put things in perspective, with Evgentech’s technology, you will be able to charge your batteries in a fraction of the time possible with existing battery charging methodologies, which means you can charge your iPhone to “full” in as little as 20 minutes, as compared to the about 3-5 hours it takes today.  Moreover, our technology is scalable to large format batteries, as well as a wide range of battery chemistries. Not surprisingly, when companies with footprints in battery power find out about us, they are interested in finding out more.  We have recently begun preliminary discussions with a number Continue Reading →