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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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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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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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Why Most Innovative Companies Miss the Mark with Patents

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.

How Companies Can Hit the Mark with Patents

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

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Why So Many Patents Fail to Generate Expected Business Value and How to Fix the Problem

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.

Why So Many Patents Fail to Generate Expected Business Value and How to Fix the Problem

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,

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Value Enhancing Patent Prosecution Strategies: Non-Publication of US Applications

The non-publication procedure for certain US patent applications is one of the most under-utilized tools in the U.S. patent strategy toolkit. After 20+ years of experience as a patent attorney, the non-publication process is one of my go-to strategies for clients who wish to start the process of patenting their innovations without also prematurely disclosing their “secret sauce” to their competitors, as would normally be the case when filing a patent application that will publish in 18 months after filing if the standard application process is selected.

Value Enhancing Patent Prosecution Strategies: Non-Publication of US Applications

In addition to allowing the information in a patent application to remain confidential from prying eyes for a longer time, this can strategy

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Value Enhancing Patent Strategies: Accelerated US and Foreign Patent Timelines

My many years of experience as an IP Strategist working with countless clients helps me hone keenly my effort to assist clients in utilizing various patent strategies available to them, including how to buck the trend of long patent pendency that can create business uncertainties. In this regard, you probably know the traditional patent acquisition timeline is typically 2.5-4 (or even more) years from US utility application filing to issuance. For clients seeking protection outside the US, the time can be twice as long. 

Value Enhancing Patent Prosecution Strategies: Non-Publication of US Applications

The time for obtaining US and non-US applications can be greatly reduced through use of acceleration techniques made available in recent years. I have obtained dozens of US utility applications for clients using the “Trackone”

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Value-Enhancing Patent Prosecution Strategies (Part 1 of 3)

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, I

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M&A Failure: When Patent Due Diligence is to Blame

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.  

M&A Failure: When Patent Due Diligence is to Blame

Notably, rarely, if ever, is an after-the-fact

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Protecting Valuable Innovations? Throw Out the Old Patent Playbook and Try Something New

In the usual situation, a patent attorney is the “ball carrier” for the inventor as a patent application moves through the Patent Office. Each “play” in the “patent game” is focused on getting a patent application to the goal line as the “win” of an issued patent. However, when the primary objective is on winning, the focus necessarily becomes the patent itself, not the reason why the “patent game” is being played in the first place. 

Protecting Valuable Innovations? Throw Out the Old Patent Playbook and Try Something New

I have learned in my 20 + years as a business-focused patent attorney there is often a huge mismatch between the coverage of a patents and the business value that the patent creates for its owner. In other