Open Innovation guru Stefan Lindegaard recently asked me what the biggest IP legal mistakes small companies make when they are working with large companies. This is a subject very near and dear to my heart, as I am currently "moonlighting" as GC of a start up energy company that is moving toward licensing our technology into large companies. Also, as a senior IP lawyer at a multi-national consumer products company, I was on the other side of such deals on more occasions than I can count. Prior to that, I was a law firm partner representing large and small corporations in patents and licensing issues, and in doing so, I now realize that I killed more deals than I ever facilitated, a situation that is more typical of law firm lawyers than it should be, unfortunately. In view of this multi-faceted experience, I present this list of the 5
With more companies building open innovation into their product development platforms, there would appear to be increasing opportunities for companies and independent IP owners to sell or license their technology. In my many conversations with corporate innovation professionals, I find that that the desire to in-source externally developed products and technology may be strong, but few know how to go about finding and acquiring what their companies need. As I have written about before, developing fruitful open innovation relationships is very much like dating: you may want to do so, but unless you know where to show up, and how to initiate conversation, chances are you will remain single for a long time unless you engage a matchmaker. Well, I guess you could be your own "matchmaker" and search for potential partners. This is easier today than it used to be because many corporations have idea submission portals and a
Happy Holidays everyone! I woke up this morning to the Christmas sunrise over Miami Beach on Christmas morning. Having grown up in this town--where Christmas means a trip to the beach, not the joy of new ice skates--I am feeling a whole lot of holiday spirit. This made me realize that I have been meaning to respond to some inquiries folks have made about patent searching tools that I use in my daily IP Strategy work. Since most of these are free (or almost) free, consider this your holiday gift from me! I hear it now: "Free? Did she say free? But, such and such company wants to charge me $1500 a month, which is a much better deal than my lawyers charge me for monitoring patents in my business space on an ongoing basis. And, this consultant offered to do a whitespace analysis that would solve all my innovation
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 aligns its IP strategy with its business strategy, value creation opportunities abound. So, why is it so hard to get business people to sign onto something that is unquestionably in the best interests of their shareholders? It's simple--patent experts wholly lack credibility with business people on these issues. This lack of credibility is compounded by the fact that these experts are given a forum to trumpet these views through use of their firms' large marketing budgets, as well as by haphazard journalists who give them a forum to expound their self-interested views without counterpoint. To this
The take home message: If your company sells a product that bears a patent number, you need to read this post in its entirety. Much has been written in recent months about false marking lawsuits, most of these in the form of "urgent legal alerts" by law firms that calmly deconstruct the appellate court rulings (this one is illustrative). At the end of the day, these articles likely do not look very "urgent" to business people like yourself because most business people do not engage themselves with patent law generally, let alone something as arcane as false marking. So, even though the subject excites us a patent experts, we really cannot expect you to get excited about something that does not seem to affect your ability to conduct business today. However, if your business is a likely target of a false marking lawsuit it will cost you big bucks almost immediately.
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
This week, President Obama will announce a $100 billion proposal to stimulate the economy, where much of the focus is to be placed in the area of R & D tax credits. In addition to making the R & D tax credit permanent, Obama will seek increasing one of the credits available from 14 to 17 percent. This announcement brought to mind a blog post that
This week, Facebook's trademark action against a small online teaching company has been all over the news. In summary, Facebook contends that TeachBook infringes its trademark rights in the "Facebook" name because, presumably, the "book" part of the name is associated in the minds of the relevant consumer public with the now well-known Facebook brand. Today, it was reported that Facebook is now trying to own the rights to the "face" part of its name. Most wouldn't be surprised that the word "book" is used as a part of the name of a multitude of products and services, which would make it appear that Facebook is using its resources to beat up on smaller companies. The natural response from the layperson is "why is Facebook being such a trademark bully?" But to someone with experience in IP strategy, the business reasons behind Facebook's actions are clear. From a legal perspective,
One of the biggest complaints I get from corporate innovation and product development professionals is how risk averse their lawyers tend to be about dealing with intellectual property ("IP") issues. It doesn't matter whether these business people are talking about their outside or in-house lawyers, either. To a person, the complaint generally tracks the contention that their IP lawyers "don't get what they do" and, as a result, make it more difficult for them to meet the objective of adequately filling their product pipelines and introducing innovative new products that will keep the lights on at their corporations. I have written and spoken about this topic on several occasions. But, recently, I have been thinking a lot about the issue of risk aversion and IP lawyers for a couple of reasons. First, I am co-leading a workshop at the 2nd Annual Open Innovation Summit next week in Chicago with my good
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 totally giving up my outreach. I recently participated in 2 radio interviews where I discussed the value of IP Strategy for entrepreneurs and inventors. Here I was on the 40 Year Old Business Virgin Radio Show with Dave Savage, Leader and President of The Inventors Association of Georgia and a person named Mohamed who has a really cool entrepreneurial story (sorry I didn't get his last name). The hosts of the show, Kile Lewis and Ted Jenkin, are irreverent business advisors, and you should enjoy the show. (I appear in the first half).