Michael D. Moberly December 19, 2012
There’s really no difference between a patent and an intangible asset. In fact intellectual properties, of which patents are one, are merely one type or category of intangible asset. The only difference is that a patent, once issued by the U.S. Patent and Trademark Office (USPTO) can assume sort of a tangible or physical property insofar as it can be framed and hung on an office wall as a testament of one’s work. Frequently, much to the chagrin of intangible asset strategists, intellectual property, i.e., patents particularly, are the presumptive ‘brass ring’ which technology transfer managers, researchers, inventors, and legal counsel, etc., set their sights, sometimes, I believe, merely because there is no intangible asset specialist – strategist available to identify and articulate alternatives. Too, obtaining a patent conveys expertise, a sort of instantaneous, but sometimes, short-lived credibility, particularly in the academic arena.
I also suspect, somewhat respectfully, that deference is often attached to patent (only) strategies based on the time honored perspective that an issued patent conveys a sense of ownership and certain legally defensible rights, technically speaking.
Feeding this ‘patent only’ strategy is the widely held, but mistaken assumption that an issued patent constitutes a stand alone deterrent to, or safe harbor from would be infringers. However, the costs associated with obtaining, maintaining, and defending patents are considerable, making the proverbial ‘patent only’ tract, at least in my view, more risky, out-of-reach for frugal inventors and innovation regimes, absent committed and deep pocketed investors.
In today’s increasingly aggressive, globally predatorial, and winner-take-all (global) R&D and business transaction environments, patents are in a constant state of risk to infringement, counterfeiting, misappropriation, theft, etc., from a host of legacy free players, independant brokers, and state-sponsored entities most of whom are engaged in some form of economic (industrial) espionage.
That said, those who have participated in venture capital forums where inventor’s seeking investment make the proverbial ‘elevator pitch’ to a shrinking audience of venture capitalists and other types of prospective investors know that the inevitable ‘what is your IP position’ question will be asked, as sort of a faux affirmation that a patent only strategy is both the preferred and necessary option.
To be sure, at the 30,000 foot level, an inventors’ answer to the ‘what is your IP position’ question may appear to be a deal breaker for ‘invest – don’t invest’ decisions, or constitute a duty of sorts levied against the inventor.
But, in a growing percentage of circumstances, and I say this with the utmost respect, there are comparatively few researchers – inventors working at the 30,000 foot level, rather most are working at the ground floror level, and should realize the ‘gatorades and royalties’ (University of Florida, 1965) are really few and far between.
Again, patents are expensive to obtain, maintain, and defend. And, even if the entire patenting process goes smoothly for an inventor (company, institution, etc.) issued patents still remain at risk with the inventor, along with other professionals associated with an R&D process or its adminstration may stumble. That is, the research product will become entangled and/or ensnared in various legal disputes and challenges, fail to be effectively marketed, and/or resources being curtailed or withdrawn which are necessary to maintain the patent.
In far too many instances, I find the intangible asset offspring (enablers) of IP. e.g., patents, are overlooked, dismissed, or overshadowed by the assumption that the time honored practice – strategy of pursuing conventional intellectual property, i.e., patent applications, provisionals, issuances, licensing, etc., are perceived as either the best or only option. Of course, I disagree!
To that point, an analogy may be in order. When one seeks the guidance of SEO (search engine optimization) firms for example, to promote one’s website and/or blog, etc., the SEO’s business development – marketing officers’ lead statement will consistently be some variation of the following, ‘we’ll get you on page one of Google’! The reality is, there is no guarantee that getting a website or blog post on page one of Google will produce conversions that many mistakenly assume will evolve merely because something one has written has successfully maneuvered its way through the ‘google algorithm gods’ and found its was to page one, temporarily.
Yes, entrepreneurs can rationalize that all it takes is one good (the right) ‘conversion’ to kick start a company down the path to riches. But, reaching ‘page one of Google’ may not be all that a startup company really needs to achieve sustainable success. Instead, they are likely to be in need of a well-coordinated, focused, and specific strategy that effectively utilizes an array of internet resources and social media that presents many different options for exposure and conversion potential, not merely one!
So, for the foreseeable future, inventors, researchers, companies, and institutions who engage in R&D, perhaps their initial call should not be to (intellectual property) legal counsel, rather to an intangible asset specialist-strategist who can identify, unravel, and assess the enabling intangible assets and offer a variety of options and strategies that ‘fit best and work best’!
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