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Startup Patent Strategy: Be Unbreakable

Several of my current clients are startup companies that understand that, to have real value, their patents must be seen by a third party as meaningful to the opportunity--be it customers, revenue stream, or any other business strategy--that this potential potential partner, licensor, or acquirer seeks to access. Put another way, patents generated by early stage companies that are developing innovative technology must “make it cheaper to go through them than around them.” For these types of patent owners, due diligence conducted by third parties is more than just “kicking the tires” of the patent portfolio; instead, their patents will be examined by an expert team to make sure they won’t "break" just when they’re needed most. As an initial aspect of this discussion, it should be stressed that not all patents are equal in value. Some patents--and, in my view, this is the

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Patentability Reviews for Innovations

Patent professionals can do a better job providing patentability review, or "opinion," services for innovators. As most readers would recognize, a patentability review assesses whether the invention to be claimed will meet the legal requirements for patentability. In the US, this entails an assessment by a patent attorney, which can be based on a formal or informal search, whether the client’s invention is novel and non-obvious over the prior art. The rules by which a patent attorney makes a determination of patentability are well-established and would not be considered controversial by most experienced practitioners. Nonetheless, as an IP Strategist who works exclusively with clients engaged in developing and delivering meaningful innovations to consumers, I know that these entrenched patentability assessment practices deserve retooling for those clients who can be classified as "innovators." To this end, I believe that the way the patent profession addresses the patentability of innovations fails to

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Startup Patent Licensing: Beating the Long Odds

Achieving meaningful revenue through licensing by startup entrepreneurs can be for all intents and purposes a “unicorn event:” much discussed, but rarely achieved. Notwithstanding this reality, a significant number of startup entrepreneurs who seek to engage me for IP Strategy and patent development consulting assert confidently that their necessity for a patent is based on a business strategy of licensing (or selling) their protected product or technology to an established company. This is not surprising because it is embedded in the DNA of much of society that “if you build a better mousetrap, the world will beat a path to your door.” Late night infomercials featuring famous people and entrepreneur “hero stories” in the press also bolster this conviction. It is certainly heartwarming and inspiring to believe that an "Average Josephine" can become rich solely on the basis of their patented idea. But, the truth is that few

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Startup Patent Strategy: US Patent Non-Publication

The TakeawayFor startups whose development efforts lag behind a looming US utility application filing deadline, use of the “Request for Non-Publication” in US patent filing can allow them to preserve the option of shoring up their patent protection for an extended period in the future, while still retaining the priority date of a provisional application filing. This can be valuable for startups that are still fleshing out their product/market fit in customer discovery, but that also have incorporated still relevant technical and functional subject matter in their provisional application. As people even modestly familiar with patents are aware, the filing of a provisional patent application requires followup with a US or PCT utility application that “perfects,” the earlier application no later than one year from that filing date. When the covered technology is fairly well-developed

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Need Broad Patents Fast? Try This.

Sieze the day: take your patent allowance!That title got your attention, didn’t it? It was meant to. After another successful round of patent application examinations for several clients in the last year, I thought others would like access to my proven patent acquisition methodology. Certainly, there’s a lot more than I can include in this post, and what is presented here should be considered to be only a high level introduction to my process. Moreover, every client requires focused attention to generate the desired patent protection, and not every business scenario mandates this comprehensive approach. But, for those situations where company leadership determines that strong patent protection is a key to achieving the desired business outcomes from investment in innovative products and technology, this methodology is not only recommended, it is required for success. Put simply, if you do the hard work

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

easy pictureIn 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 basis of most patent attorneys’ practices, I work at the front end of the patenting process to design patent strategies that will enhance my clients’ business value first and foremost. When alignment is created with business goals, subsequent patenting efforts will necessarily result in protection that matters to the value of the company. In this regard, I have a number of tools in my “Patent Strategy Toolbox” that I deploy regularly when developing patent prosecution recommendations. Notably, when I mention these tools to new clients,

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

invalid patentLast 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 proverbial "bacon" of The Medicines Company. Since I wrote about this case about a year ago when the ANGIOMAX patent was invalidated by a three judge Federal Circuit panel for violating the US "on sale bar," I thought it prudent to update the post with this new information. The purpose of this post is not to summarize the new "on sale bar" rule. Many law firms and commentators have already done so. A good summary can be found here. In short, the law

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IP Strategy is Increasing Focus at Innovative Companies: Here’s Why

After more than 8 years, I can report that IP Strategy is an increasing focus at innovative companies, and there is a solid reason why this is so. By way of background, for many years, I have been part of a small minority of IP experts who advocate that companies desiring to maximize the value of their IP investments re-think the way they seek and obtain patents. In short, I and my IP Strategist peers urge companies to wrest control of their “IP destiny” from their legal service providers who have traditionally been seen as the primary drivers of the patenting process for their clients. Of course, readers of my regular ruminations know that my strongly held view is that “the only person who needs a patent is a patent attorney,” and that, even for those companies for which patents are critically necessary, very

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Product Companies Must Modify Patent Strategy When Adopting Innovation as Business Model

I recently finished an IP Strategy engagement with major consumer products corporation, where I interfaced with the head of New Product Development and Innovation Strategy. This company is embarking on a major shift in the way it brings products to market. In short, the company is transitioning from one that introduces new products with incremental improvements into the market on a regular basis, to one that focuses more on innovation. For this client, this strategy will mean that a significant portion of its product development efforts will be focused on solving unmet and identifying emerging customer needs, with the ultimate goal of introducing truly innovative consumer products that will be successful in the marketplace. I am sure that my client's new products will be found to be highly desirable to their consumers: the team is highly competent in the processes that need to be implemented in order to successfully execute innovation-based

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10 Key IP Strategy Insights for Innovative Companies for 2016 and Beyond

different-1163255-1278x903As 2016 begins, I am entering my 8th year(!) of writing about IP strategy insights from a business value creation perspective, both here on my IPMaximizerBlog.com and, more recently, on LinkedIn. While there were quite a few IP lawyers writing blogs in 2008, no one else was then writing about IP strategy. Today, there are even more IP lawyers writing blogs about IP law, but still almost none writing that address IP strategy topics that are meaningful outside of the IP monetization and large IP portfolio context. Over the years, it has sometimes seemed like I was the proverbial "lone voice in the wilderness" who speaks frankly (or as one of my regular readers said to me last year "bravely") about how innovators can take charge of their IP strategy to create value and reduce

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