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Patent Lawyer Practice Models that Work and Don’t Work for Startups and Small Companies

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.

Patent Lawyer Practice Models that Work and Don’t Work for Startups and Small Companies

These lawyers seek to engage clients like mine,

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Better Patent Referrals: Tips for Non-Specialists

When seeking information about patents, clients often ask their business lawyers or their personal friends for referrals. However, just knowing a patent lawyer personally or by reputation should not be the reason that a referral to a lawyer is made—even if the person making the referral has a law degree. Patents can be critical for business success and, for some clients, specialized expertise is required to ensure the right result is obtained.

In this regard, many clients need not just a patent, but a patent that creates business value for their company. Notably, this objective requires a keen business insight, something that is not in the wheelhouse of many otherwise competent patent practitioners. There are questions that a

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Enhancing Patent Outcomes: Designing Applications for Allowance

We all know the patent application process can cost $20,000 or more — and often much more. This alone should give those of us who obtain patents reason to pause and consider how we can and should do better relative to generating patent strategies for clients. Some of my peers will say that patent protection has more hurdles to overcome and requirements to meet today than in years past, and this contributes to the high cost.

Certainly, this is true, but merely shrugging our shoulders and saying something akin to “I’m doing the best I can under the circumstances” is not a satisfactory option for clients who are relying on patent protection to enhance the value of their businesses.

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Better Patent Services for Innovators: Patentability Reviews

For the past 12 years as an IP Strategist, I’ve worked exclusively with clients engaged in developing and delivering innovative products to consumers. From this unique vantage-point, I think it’s time for some entrenched patentability assessment practices to be retooled for innovators. I’ve come to this conclusion because many of the ingrained patent application development processes in my profession consistently fail to properly address the non-standard nature of innovators’ products and technology when assessing the scope of patent protection that can, and should, be recommended to help these risk-takers extract maximum value from their efforts.

Better Patent Services for Innovators: Patentability Reviews

An example of how strategic IP-thinking differs from that of traditional patent attorney processes is that I believe

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Creating Business Value with Customer-Directed Patent Strategy

When you think about patents, you probably first consider who should be hired to protect ideas from competitors. When I think about patents, I think about what should be protected, and how it can be done efficiently and effectively. Unless you have this nailed down first, it doesn’t matter who you hire to help you, the end product will likely fall short of your goals.

Creating Business Value with Customer-Directed Patent Strategy

In this regard, I’m more concerned about the client’s innovation story and how patentable concepts will benefit her customers. In short, I believe it is the customers we should focus on protecting, not just the product we are selling to them. While a bit more effort may be

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Want Broad, Meaningful Patent Protection Fast? Use These 3 Steps

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 on the front end as outlined in this post, it is more likely that

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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.

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Lack of Focus on IP Strategy Destroys $100 Millions in Value

invalid patentAs an IP Strategist, I am fascinated by stories from which declining business fortunes can be traced directly to failed patent strategies. Often, the failures can be traced to patent attorney errors that limit the effectiveness of a company's patent to prevent competitive knock-offs, but, often, the problems can be traced to the lack of accountability for IP strategy within an organization. For those companies where IP is a primary driver of competitive advantage, the absence of someone who "owns" the job of making sure IP is properly captured and protected can result in unrecoverable errors that opens the innovator to unwelcome competition. In this regard, the recent loss of patent protection to a popular drug product should serve as a useful case study on why the C-suites of innovative companies should consider strategic in-house IP counseling to be a

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Failure to Generate REAL Patent Protection: Keurig’s Story (Part 2)

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

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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 they (should) understand, as well