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
Few patents have the intended effect of enabling long term premium profit generation for the company that brings innovative products to the market. While patent attorneys, academics, and legislators argue strenuously about the reasons that patents are flawed in this regard, I have a simple hypothesis that has been demonstrated time and again in my IP Strategy practice: too many patents read like diagrams intended for use in assembling the product from separate pieces.
Such patents typically spend most of the disclosure describing in gory detail how the pieces and parts fit together, along the lines of "flange 15 is connectable to
It’s not uncommon for me as an IP Strategist with over 20 years of experience to be contacted to provide a second opinion on a company’s patent portfolio. This generally occurs when clients aren’t totally satisfied with previous patenting activities because their attorneys failed to follow through on promises that their efforts would create meaningful business results.
It’s typically easy for me to identify the mismatches between patents and value creation because I was an in-house IP lawyer for years after spending my early career at law firms. While in a law firm every patent had value to me because that was my business,
Analysts say that 70% or more of corporate acquisitions will be judged “failures.” I believe that many of these failures can often be attributed to the failure of conventional due diligence processes to suitably account for the participation in patents in predicting long-term financial returns for the acquired company. One reason for this is that the due diligence process moves quickly as deals need to be closed, oftentimes sacrificing robust investigation of complex issues, such as patents. Also, you can’t see something that you’re not aware of, and I know that many business people are not aware of the value that patents bring to a company that is creating innovative products and technology.
Notably, rarely, if ever, is an after-the-fact
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
"You can't sell me IP Strategy, Jackie," one of my top clients said to me recently when I sat down with him to conduct customer discovery for my IP Strategy practice. This client, a successful serial entrepreneur whose company has engaged me as "fractional Chief IP Counsel" for the last 1.5 years, swears by the services I provide to him--so much so, that he is a primary source of startup entrepreneur referrals that I obtain today. I was thus surprised that he didn't see my value as providing him with "IP Strategy," but as something else entirely. He said: "If I had to go on the record of why I value your expertise, it's because IP is important to my exit, and you look at IP differently than any other lawyer I have known. I know you're focused on creating value for my startup, so I want to keep you
I recently had to give bad news to a new client, the CEO of a successful global electronic hardware company. This CEO hired me earlier this year to help ensure that his company's upcoming innovations, which were the product of a several year turnaround program, were protected from competitive knock-offs. I have completed a couple of projects for the company to date, and he now wanted to discuss IP protection for a new product for the European market that would serve as a platform for later product spin-offs both there and in the US.
This new product incorporated a number of highly innovative features and almost certainly could generate broad patent
In Part 1 of this "Failure to Create REAL Patent Value: Keurig's Story," I asserted that the company's current business woes can be directly attributable to a flawed patent strategy. To summarize, as a result of the Keurig Green Mountain's failure to obtain durable patent rights on its coffee pods, there has been a proliferation of lower cost generic pods. Because these generic pods sell for about 40% less than the branded "K-Cup" pods, Keurig Green Mountain has and will continue to lose substantial revenue due to this increased competition, even while its coffee maker innovation remains wildly popular with consumers. The question then becomes how did the company fail to fully capitalize on the value its disruptive innovation created in the marketplace? One can see what went wrong with Keurig Green Mountain's patent strategy by starting with the litigation record in which the Read More
It’s not uncommon for entrepreneurs to think about what I call “the Usual IP Suspects”--that is, patents, trademarks, copyrights and trade secrets--when they consider protection of their company’s value. I learned working as patent attorney at a prestigious IP law firm, and later in a corporate environment, that often a company’s value can exist in forms other than these most recognized forms of IP protection.
Indeed, for many companies, a great deal of value can reside in the broad class of “intangible assets.” It is then important for company leaders to identify and protect these less recognizable forms of company value. The B-School types say, “what