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.
Checklists Could be the Key for Managers to Understand Whether Their Company’s Patents are Worth the Paper They’re Written On
New Study Reinforces Value of Patents in Venture Capital Investment
Regular readers of the IP Asset Maximizer Blog will know that I am a strong advocate of the use of IP analytics by venture capital investors, as well as others. Clearly, VC's need better ways to gauge the appropriateness of an investment when more than 50% of venture investment is a loss. My point of view is based on personal experience with various clients, as well as external review of a few investments that I thought signaled that a review of the IP landscape should have been conducted prior to completing the deal. So, I was glad to see my opinions backed up by real data. Specifically, my friends at IP Vision, a patent landscaping and data company originally out of MIT, conducted an extensive study of 9,000 venture backed firms. The study was done with investors, corporate executives and members of the faculty at Read More
A New Framework for IP Strategy Conversations: Ex Post vs. Ex Ante (from IP P®OSPE©TIVE)
(Editorial Note: I have gotten some great feedback from my recent post 9 Out of 10 Patents are Worthless: Here's Why and How to Keep it Happening from You (Part 1 of 4). I am working on the next installment, so be on the look out for more of my thoughts on this meaningful topic.) Readers of the IP Asset Maximizer Blog will probably enjoy this very smart post from Ian McClure of IP P®OSPE©TIVE entitled "A New Legal Landscape for IP: Ex Ante will Join Ex Post Services". (While the post says some very flattering things about me, this is not why I am recommending it: the IP P®OSPE©TIVE blog is consistently good, and Ian "gets" IP business issues.) In this post, Ian frames IP Strategy in terms of "ex post" and "ex ante"--that is, instead of dealing with IP issues after it exists (i.e., ex
9 Out of 10 Patents are Probably Worthless: Why and How to Prevent this from Happening to You (Part 1 of 4)
I decided to start 2010 with a controversial premise: what if 9 out of 1o patents--or 90 %-- issued in the US were worthless? Believe it or not, but this probably is not too far off the mark. By "worthless," I mean that it is likely that only 10% of patents in force today meet each (and every) of the below criteria:
1) The patent directly or indirectly protects a product or technology that is being sold in the market today;
2) The patent covers a product or technology where there is or likely will be viable competition in the marketplace such that a patent is needed to legally restrain competition; and
3) The patent owner is ready, willing and able to bring a patent infringement suit against an infringer or it is likely that your competitor believes that it will possibly do so.
Unless
Success in Innovation Requires IP Counseling on the Front End: Here’s How to Make it Happen
The 2009 Open Innovation Summit was held in Orlando two weeks ago. The event was attended by corporate practitioners of Open Innovation, including people from P&G, GSK Consumer, Cisco, Whirlpool, J&J, HP (here are Phil McKinney's slides), Clorox, and many others. Leading consultants in Open Innovation also attended, including Stefan Lindegaard of Leadership+ Innovation, Braden Kelley of Blogging Innovation and Robert Brands of Innovation Coach. A number of vendors of services were there, too. I thought this was a great knowledge share event, and a must do for folks wanting to learn more about Open Innovation. Another Summit is planned for August 201o in Chicago. At the Summit, we spent much of the 3 days hearing how the attending companies, many of which include those in the Fortune 100, view Open Innovation as a critical aspect of sustainable growth and profits. We also heard about
A Closer Look at the Patent Office’s New Conversation about Adoption of a “First to File” Rule and a Proposal for a Win-Win for the Patent Office and Inventors
(Editorial Note: Regular readers of the IP Asset Maximizer Blog might find this post an departure from the usual topics discussed on this blog. In the almost 2 years I have been blogging, I have consciously avoided talking about specific aspects of patent law, both in the form of case law, patent reform efforts and the US Patent Office itself because I believe there are many great blogs that do a great job that frequently discuss these topics and that I can likely add little to the already substantive discussions occurring elsewhere. However, given the great significance of the so-called "first to invent" system to the interests of individual and corporate inventors alike, I felt it appropriate to weigh in on the conversation. Put simply, any changes in the first to invent rule must clearly flesh out and respond to the resulting effects to businesses of all sizes, as well
Corporate IP Managers: There are Bargains Galore Available at Some of the Most Prestigious Law Firms
With corporate legal budgets being cut more than 10% in 2009 it might seem like challenging times to manage a corporate IP department. To add to the difficulties, such reductions are occurring even while many corporations are increasing the focus placed on creation of value using strategic IP management. Corporate IP managers must therefore obtain more valuable IP with smaller budgets.
Fortunately for corporate IP managers, the current economic climate has forced many prestigious law firms to, perhaps for the first time, develop innovative billing and practice models. This has not only resulted in the effective billable rates of these law firms effectively dropping more than 10%, but many law firms have or are developing more efficient ways to deliver legal services to their clients. Smart law firms will pass these cost savings on to their clients to
Improve Your Chances of Obtaining a Patent at a Reasonable Cost and Time by Demonstrating the “Wow Factor” in the Application
A strong majority of people seeking patent protection to protect their products or technology leave the details the drafting process to their patent attorneys. That is, given the specialized (and, frankly, arcane) nature of the patenting process, even highly accomplished business professionals believe that a patent specialist (i.e., attorney or agent) is better equipped to understand how to best describe their invention to the US Patent Office (“USPTO”). This can be an ineffective way to handle the front end of the patenting process because it can result in the process being more contentious. Such contentiousness can result in narrower claims than desired and can make the patent take longer to issue and make the process considerably more expensive. In determining whether a client’s invention meets the legal requirements for patentability, a patent specialist thinks about how to legally distinguish the invention from those that have come before. Specifically, the patent specialist
IP Business Congress: Blog Summaries for Those Who Couldn’t Attend
The IP Business Congress ("IPBC") was held on June 21-23 in Chicago. This meeting, established by IAM Magazine, brought IP business experts, both lawyers and non-lawyers, from around the world to discuss issues relevant to IP. If, like me, you were unable to attend, you will appreciate the blog authors who have thoughtfully posted their summaries and thoughts about the Congress. (If anyone comes across any more, please let me know and I will add them.)
Joff Wild: IAM Magazine Blog
Michael Martin: Broken Symetry Blog
Duncan Bucknell: IP ThinkTank Blog
Peter Zura: 271 Blog (Great overview of the NPE break-out session)
IP.com: Securing Innovation (Interviews with IP Hall of Fame Inductees)
Want to Obtain Patents to Protect You from Competitors Knocking Off Your Innovative Products or Technology? It’s Easy-Don’t Be “Selfish”
Recently the CEO of a start-up asked me for the most important advice I could give before she filed a patent application directed toward protecting her company's core technology. In response, I said "don't be a selfish patent applicant." Few patent applicants obtain such counsel from their advisers and it shows: the vast majority of patents are written from a selfish perspective. (Note that I am using "selfish," in the context that the term is used in marketing i.e., thinking that others see the same things in your product or technology as you do. When one selfishly markets her product or technology, she assumes that others will buy it for the benefits she sees, not for the reasons upon which consumers will base their purchasing decisions. So when I say that most patents are written "selfishly," I mean that applicants (both individual and corporate inventors alike) approach the patenting process with
