Business IP and Intangible Asset Blog, Michael D. Moberly

Client Counsel: Intangible Assets and Law Firms

March 4th, 2013. Published under Intangible asset strategy, Law Firms. No Comments.

Michael D. Moberly   March 4, 2013       ‘A blog where attention span matters’!

Its 2013, and globally operating businesses are still in the initial stages of, to be sure, a permanent knowledge (intangible asset) based economy.  The objective is clear, compelling, and absolutely necessary.  That is, at this juncture, law firms with genuine intellectual property (IP) practices in place coupled with a strong culture – orientation for a strategic ‘forward looking – forward thinking’, may well be the professional entity best positioned to provide intangible asset stewardship, oversight, and management (S.O.M.) services beyond providing merely patent, trademark, and copyright issuances and the all, but inevitable, litigation.

This can only occur, I believe, with a dedicated, ‘roll your sleeves up’ client centric intangible asset awareness, alertness, and accountability (training) initiative.  It’s not terribly costly, nor is it overly time consuming, but it’s an excellent strategy  to legitimately re-engage existing clients as well as engage new-prospective clients, and if effectively articulated, will likely be met with real appreciation.

Intangible assets exist in numerous categories, serve company’s (the originators, holders of those assets) in many capacities, and of course, can provide substantial levels of  ‘contributory value’ and competitive advantages.  That is providing. of course, those company management teams, c-suites, and boards achieve (possess) both tactical and strategic operational familiarity with intangible assets’ relevance and use as viable and consistent contributors to (company) value, sources of revenue, and ‘building blocks’ for sustainability, profitability, and growth.

In brief, the client centric awareness, alertness, and accountability initiatives I’m referring to should, at minimum, include components (modules) to for client companies to become smarter insofar as…

•  Identifying intangible asset vulnerabilities and capabilities to rapidly detect and pursue suspected instances of (asset) compromise, loss, erosion of (asset) value and/or competitive advantages, anyone of which will jeopardize (asset) ownership, control, and use.
• Becoming an entrusted custodian of clients’ intangible assets through (asset) stewardship, oversight, and management (S.O.M.) that can be genuinely leveraged to attract additional intangible asset (client) services.
• Become a vehicle to accelerate a law firm’s entrée to build – extend intangible asset service initiatives into new, perhaps non-traditional and/or unconventional market spaces, i.e., (a.) trusted overseer of university-industry collaborative research projects, (b.) stronger role in investment and venture capital initiatives where intangible assets are key players, (c.) helping clients negotiate cyber – IP insurance coverage and premiums etc.
• Enhancing a companies’ ability to recognize asset life, contributory value, and competitive advantage cycles and act accordingly in a strategic and well informed manner.
• Instituting (asset) competitive advantage – contributory value safeguards, i.e., companies that effectively safeguard its proprietary intangible assets, simultaneously safeguards its ability to distinguish itself in its market space through the uniqueness of its knowhow, i.e., its intellectual, structural, and relationship capital, etc.
• Achieving more efficient, expedited, but expanded use of legal counsel by concentrating on IP and intangible asset S.O.M. issues and less on corrective or remediating client missteps.
• Strengthening client non-disclosure, confidentiality, and non-compete provisions in employment contracts to include the full array of intangible assets.
• Strengthening investor confidence in a company by executing intangible asset risk exposures mitigation – prevention practices.

 My blog posts are researched and written by me with the genuine intent they serve as a worthy and respectful venue to elevate awareness and appreciation for intangible assets throughout the global business community.  Most of my posts focus on issues related to identifying, unraveling, and sustaining control, use, ownership, and monitoring asset value, materiality, and risk.  As such, my blog posts are not intended to be quick bites of information, unsubstantiated commentary, or single paragraphed platforms to reference other media. 

Comments regarding my blog posts are encouraged and respected. Should any reader elect to utilize all or a portion of any of my posts, attribution is expected and always appreciated. While visiting my blog readers are encouraged to browse other topics (posts) which may be relevant to their circumstance or business transaction.  I always welcome your inquiry at 314-440-3593 or m.moberly@kpstrat.com

Post America Invents Act: Necessity For IP – Patent Counsel

February 13th, 2013. Published under IP strategy., Law Firms. No Comments.

Michael D. Moberly   February 13, 2012

I found an interesting read in an article published in Bloomberg Law Reports titled ‘Your Opinion Matters to Us – The Continued Value of Patent Counsel Opinions in a Post American Invents Act Era’.  The authors, lawyers of course, describe how patent counsel opinions have declined since the Federal Circuit’s 2004 decision in Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corporation in which the court held that…

• no adverse inference of willful infringement of a patent may be drawn either from the failure to obtain legal advice, or
• the invocation of the attorney-client privilege concerning the advice sought.

The America Invents Act (AIA) actually extended the Knorr-Bremse decision by…

• prohibiting one’s failure to obtain the advice of counsel, or
• failure to present such advice to the court or jury,
• from being used to prove either willful and/or induced infringement.

More specifically, AIA’s Section 298 (35 U.S.C.) includes the “Advice of Counsel,” which states…

The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.

Previously, of course, potential infringers who possessed actual notice of another parties’ patent rights, had an affirmative duty to obtain competent legal advice before initiating any infringing activity.  Failure to do so could lead to a finding of willful infringement.

AIA framers suggest that Section 298 was inserted to (a.) protect attorney-client privilege, and (b.) reduce pressure on accused infringers to obtain opinions of counsel solely for litigation purposes.

Insofar as understanding Section 298’s affects, the authors suggest it’s useful to examine current law, one of which is the doctrine of willful infringement.  This particular doctrine exists to inhibit objectively reckless behavior.  For example, if an innovator or entrepreneur inadvertently engages in infringement by neglecting to consider (a.) the likelihood that their actions (will/may) constitute infringement of an existing valid patent, and (b.) this probability (risk) is known and/or obvious, then (c.) it’s possible that the entrepreneur or innovator may be found liable for willful infringement with the accompanying substantial damages.

Insofar as matter-of-factly stating whether or how the AIA has affected the demand for IP (patent) counsel, I don’t believe the following quite meets the ‘rocket science’ test because I have no objective data to support it either way, i.e., that there has been a general reduction in legal (particularly, outside counsel) budgets due to one or a combination of (a.) the global economic downturn, (b.) the new provisions incorporated in the AIA, and/or (c.) the demoralizing and momentum stifling costs associated with securing competent IP (intellectual property) counsel by individual entrepreneurs, innovators, and R&D intensive SME’s (small, medium enterprises).

Some IP law firms are politely serving up warnings that dispensing with opinions from expert patent counsel does carry some downsides.  Certainly, no argument from me!  One of the (potential) downsides I hear mostoo is the proverbial ‘I wish I had done – known that’. Such sentiments become particularly acute when, not so much if, challenges, disputes, or litigation arise at some point, regarding the propriety or status of a patent.

The inference that patent counsel wish to convey is that (IP) clients will be better positioned to (a.) avoid having their IP challenged, disputed, and/or litigated, and (b.) defeat claims of willful infringement, enhanced damages, or induced infringement if experienced and competent IP (patent) counsel are involved at the outset in terms of rendering opinions. Such timely and experienced perspectives that a patent, and the embedded intellectual capital, are not infringed, invalid, or both, will likely continue to be an influential defense to allegations of willful infringement.

There’s no argument from me that competent and experienced IP counsel can, and routinely are necessary and beneficial.  I am particularly supportive of those seemingly few IP counsel who can articulate for clients’, an evidence-based, 360 degree picture for clients absent over-dramatized FUD  factors, i.e., fear, uncertainty, and doubt.  That said, there is absolutely no question a persistent, aggressive, globally asymmetric, and increasingly predatorial environment of risks, threats, and vulnerabilities exist, including ‘trolling’, which are variously directed to proprietary intellectual, structural, and relationship capital, i.e., intellectual properties.   This leaves ample room for competent, current, knowledgeable, and experienced IP counsel to remain valuable collaborators to entrepreneurs, innovators, and corporate R&D processes in the post AIA era.

(The inspiration for this post evolves from article written by Edmund J. Haughey and Stephan Yam of Fitzpatrick, Cella, Harper & Scinto in Bloomberg Law Reports, February 14, 2012.)

My blog posts are researched and written by me with the genuine intent they serve as a worthy and respectful venue to elevate awareness and appreciation for intangible assets throughout the global business community.  Most of my posts focus on issues related to identifying, unraveling, and sustaining control, use, ownership, and monitoring asset value, materiality, and risk.  As such, my blog posts are not intended to be quick bites of information, unsubstantiated commentary, or single paragraphed platforms to reference other media. 

Comments regarding my blog posts are encouraged and respected. Should any reader elect to utilize all or a portion of any of my posts, attribution is expected and always appreciated. While visiting my blog readers are encouraged to browse other topics (posts) which may be relevant to their circumstance or business transaction.  I always welcome your inquiry at 314-440-3593 or m.moberly@kpstrat.com

Intangible Asset Practice Area for Law Firms: Opportunity To Solidify Client Relationships and Generate Returns and Competitive Advantages…

July 16th, 2012. Published under Law Firms, Managing intangible assets. No Comments.

Michael D. Moberly    July 16, 2012

Providing services that elevate client familiarity with their intangible assets and strategies to better exploit those assets, can legitimately endear clients to a (law firm) service provider by exceeding expectations and returns for both parties!

Intangible assets surpassed tangible (physical) assets as the dominant economic and competitive advantage driver for most companies beginning in the mid to early-1990’s. This trend continues today with conservative estimates being 65+% of most company’s value, sources of revenue, and ‘building blocks’ for growth evolve directly from intangible assets!  For a percentage of c-suites, management teams, and boards responsible for company governance, identifying, harnessing, and exploiting intangibles variously remains a challenge.

Many business leaders portray and/or assume intangible assets are synonymous with intellectual property, an assumption that is more incorrect than correct, i.e., IP is just one type/category of intangible asset, others include intellectual, structural, and relationship capital, brand, reputation, and goodwill to site a few.

One rather confounding aspect to the irreversible and global universality of  intangible assets comprising the primary economic and competitive advantage driver for most companies, is that more (business – legal) service providers have not effectively nor widely leveraged intangible asset management, stewardship, oversight, and safeguarding as a platform for ‘being the first on the block’ to deliver enduring and needed intangible asset related services to clients – companies. 

I am drawing attention to law firms and IP practice areas in particular, because most have the organizational and marketing structure, experiential disposition, supportive expertise, and client base already in place to develop a strong intangible asset practice could stand alone as well as compliment each of the other practice areas.  With minimal orientation and marketing adjustments, firms can respectfully exploit the expanding global market of intangible assets on behalf of their clients.  Unfortunately, there is little evidence that this has emerged nearly as broadly as it should.

Those familiar with intellectual, structural, and relationship capital and company culture, know that each contributes mightily to the (a.) development of intellectual property, and (b.) continuous production of ‘internal pipelines’ of valuable intangible assets. In both, effective management, stewardship, oversight, and safeguards are warranted, necessary, and fiduciary responsibilities.  Too, when a client company has a strong presence – pipeline of intellectual, structural, and relationship capital that co-exist in complimentary – collaborative ways, it’s quite correct to presume additional intellectual properties are on the horizon.

Again, providing services that elevate client familiarity with intangible assets and strategies to better exploit those assets, can legitimately endear clients to a (law firm) service provider by exceeding expectations and returns for both parties!