Introduction As someone who works with a wide variety of startups and small companies as the in-house expert interfacing between outside patent lawyers, I have found it helpful to compare and contrast the various legal practice styles encountered, at least because I strive to continuously improve the IP strategy consulting services that I provide my clients. Recently, I have noted that there often appears to be a profound lack of alignment between the desired outcomes that my clients seek from their patent efforts and the business models of many of the lawyers we encounter. These lawyers seek to engage clients like mine, but often they are not able to provide the value we are seeking. Since I have been thinking a lot about this topic lately, I decided to write about my experiences because others may appreciate the context that I can bring
Patent Lawyer Practice Models that Work and Don’t Work for Startups and Small Companies
Value-Enhancing Patent Prosecution Strategies (Part 1 of 4)
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 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
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 summarize, by "worthless," I mean that the innovator's patents will not cover anything that consumers desire to buy. Logic thus dictates that patents will be irrelevant to the startup, as well as expensive wastes of time, unless protection aligns with a validated customer demand for the innovator's product or technology. This is where a key difference falls out between the patent filing strategies for established companies and startups where each is developing innovative products or technology. The former already have products in the market and customers that
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
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 companies over the years for which comprehensive patent coverage was critical to financial and market success. On the other hand, I have advised a much larger number of startup companies over the years where patenting made little difference to their fortunes. The subjective nature of IP advice holds for other patent professionals. Our respective years of experience results in tacit knowledge that becomes "expertise." This expertise guides clients to us for advice and allows them to trust in our counsel. Missing from my knowledge
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 infrastructure needed to handle the myriad of details involved in an IP law practice. Of course, this expensive infrastructure must be sustaining, so while a lawyer serves today’s clients, her eye must also be on finding the next client because payroll and rent obligations don’t take a holiday when clients do. This "feed the beast" nature of the IP law practice model was a primary reason that I decided several years ago that I would not again work in the traditional practice of law. How could I? The standard legal service framework required me to build
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 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
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:
- 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
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 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).