Patrick Anderson of the great Gametime IP blog reported the details of Google's new prior art searching tool*. This is such important news, I thought it important to repeat it in a separate post. Patrick provides detailed instructions for how to use the Google patent searching tool, and I will not repeat that information here. This post provides commentary on why I think this is a very good development for the patent world. Google's original announcement on its blog is here. It does not appear coincidental that Google is upgrading its patent searching capabilities: in this press release from June 2010 we are informed of the partnership between Google and the USPTO to increase the amount of US patent information available to the public. When used correctly, Google's tool can help "democratize" the patent analysis process
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
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
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.
(Happy belated Holidays to readers of the IP Asset Maximizer blog. The dearth of postings on this blog lately is due not only to my hectic holiday schedule, but also the death of my aged Grandfather. Thanks everyone for your patience--we'll be up and running on a regular schedule after the New Year.) I just came across this post from the Blogging Innovation blog, hosted by Braden Kelley. (Anyone interested in innovation MUST subscribe to Braden's blog.) The post, entitled "Part 1: Three Innovation Distinctions" is by Steve Shapiro of Innocentive, distills what innovation is down to words which are placed in counterbalance with the standard model of product and technology development. Specifically, Steve contends that innovation is about:
- Challenges not Ideas
- Process not Events
- Diversity not Homogeneity
A possible upside to the recent economic downturn is that many previously accepted business models are being revealed as in need of substantial reinvention or even total elimination. The billable hour/leverage law firm model for legal services is one of these increasingly maligned business models, and is now appearing to be in danger of ending up in the dustbin of history. Specifically, even those who benefit handsomely from the billable hour, such as the Cravath firm's many $ 800 per hour lawyers, now realize the fundamental irrationality of charging a client for time spent instead of value provided. This alone should signal that change is in the air. Notwithstanding the growing conversation about the need for alternative legal service billing methods, I fear that the majority of IP law firms will either try to ignore the desire for change or will respond by offering
As a self-described "Recovering Patent Lawyer," I am now effectively an outside observer of the way the patent business is conducted in the law firm practice environment, and how corporate and other clients purchase patent legal services. In this last year in which I have re-invented myself as an IP Strategist, I have come to firmly believe that the basic patent law firm business model contains a fundamental flaw: outside patent counsel can make money only when they actually do work for their corporate clients. As such, there is no value when a patent attorney (or her law firm partners) tells a client that he should not pay you for the attorney's expertise. This necessarily sets up a tension between what the best interests of the law firm attorney and those of the corporate client.
As a business leader in a small to mid-sized corporation, you know that businesses such as yours are increasingly looking toward intellectual property as a means to generate assets. This is not surprising because it is estimated that less than 15 % or greater of your corporation’s value today is situated in its tangible assets. (See for example, http://www.ipfrontline.com/depts/article.asp?id=3674&deptid=3) Not all of this intangible value is located in your patents, off course. Indeed, your corporation may not even own any patents today. But if your organization extracts measurable value from proprietary technology or products, corporate value is heavily reliant on your patent and intellectual property strategy. That is, if your corporation’s technology and/or products are valuable, another company is likely to want a piece of the action, which, will result in erosion of your sales and profits. If this is the case for your corporation, you may be wondering
Even though you are a strategic and savvy businessperson, you may not be feel entirely comfortable with the substance and value of your company’s patent portfolio. In the face of this, you may believe that it is better to cede management of your company’s patent strategy to your patent attorneys. You may make this decision even when you would not consider outsourcing management of any other type of valuable corporate asset. Indeed, you likely would not give a moment’s thought to handing off management of any of your company’s valuable assets to a non-businessperson. For example, would you put your attorneys in charge of maximizing the payback of your innovation product pipeline or your business’ account receivables? Of course not. As an IP Strategist and owner of an IP Strategy and consulting company, I can guarantee you that, if your company owns one or more patents that prevent others from knocking