Archive for 'IP strategy.'
Michael D. Moberly July 18, 2016 ‘A blog where attention span really matters!”
Among other things, I am most hopeful this piece prompts millennials educated – trained in IP (intellectual property) law to consider having engagements with companies and business persons operating in the conventions of Islamic (Sharia) law is an inevitability, not a distant or worrisome probability.
It’s easy to find law firms with current operational familiarity with G8 IP (intellectual property) laws. On the other hand, it is challenging to find firms’, particularly in the U.S., with IP practices that sense urgency to acquire comparable levels of (in-house) expertise with respect to Islamic (and Sharia) IP law. The rationales are obvious, but, to be sure, there are geo-strategic economic indicators aplenty that suggest acquiring even rudimentary familiarity how Islamic law treats intellectual capital, i.e., ownership – value of products of the mind in B to B (business) contexts. Through my lens, that’s precisely what horizonal thinking-looking IP law practices should consider preparing, especially in light of the universal economic fact that 80+% of most company’s value, sources of revenue, and ‘building blocks’ for growth, profitability, and sustainability globally lie in – directly emerge from intangible (IP-related) assets.
This globally universal and irreversible reality suggests there is prudence for law firms to achieve operational familiarity with Islamic IP and its Sharia interpretations. That’s because
IA’s (intangible assets) and their close cousins, IP, are now consistently integral and in play in overwhelmingly large percentages of transactions related to business development, operation, growth, profitability, sustainability especially when tactical, strategic, negotiation, and outcomes are critical.
Fortunately, there are a few academic papers that shed practical light on the fundamentals as well as the intricacies of Sharia influences on Islamic IP law. A particularly useful paper which I frequently reference is authored by Silvia Beltrametti titled ‘The Legality of Intellectual Property Rights Under Islamic Law’.
After studying Beltrametti’s paper, it is clear her work/research on these matters, was not intended to serve as an instrument to sort out the conventions of Islamic, western, and Asian IP (intangible asset) law for an imagined or presumed (future – eventual) convergence. There is little doubt in my judgment, law firms that choose to acquire a rudimentary understanding of Islamic (Sharia) IP law can, in an early adapter mode, set a high bar for (law firm) competitiveness.
I am confident there are few, if any, minds who believe a global convergence of IP law is an inevitable extension of (business) globalization. Of course, understanding the distinctions and practicalities of Islamic IP (Sharia influences and interpretations) law can lead to many useful and necessary insights going forward.
Among other important aspects of Dr. Beltrametti’s work is that Islamic IP rights are essentially, in their early stages of promulgation and/or regulation. Going forward, there are obvious issues that need to be resolved. A prominent issue is whether the current political and cultural-tribal turmoil, war, and rhetoric that envelope a significant percentage of the land mass – countries where Islam dominates can subside. At least long enough whereby relevant principles of Islamic (Sharia) and western WTO (World Trade Organization) IP law can find common ground intellectually, operationally, and legally to achieve a level convergence whereby IP and technology transfer can be accommodated on a routine basis.
To be sure, there are substantial challenges which, no doubt, will require time, trust, and political will to resolve, assuming of course, there will recognition at some point, perhaps born out of mutual economic – trade necessities to…
• ameliorate perceptions of dominance of western IP law.
• encompass Islamic perspectives regarding legal rights to outcomes of intellectual capital.
• incorporate interpretive flexibility and adaptability with respect to Sharia law’s primary sources; the
Qur’an, the Sunna, Ijma and Qiya, which are often applied synonymously with Islamic law.
It is conceivable, not Pollyannaish, to believe all could be respectfully achieved – applied, as it has in other countries – regions, as a reflection of global business – trade – technology transfer realities. And, recognition of the economic fact that 80+% of most company’s value, sources of revenue, and ‘building blocks’ for growth, profitability, competitiveness, and sustainability today reside in or emerge directly from intangible and IP-based assets.
Silvia Beltrametti, (The Legality of Intellectual Property Rights Under Islamic Law, The Prague Yearbook of Comparative Law 2009. Mach, T. et al. (Eds). Prague, 2010. pp. 55-94).
Michael D. Moberly May 9, 2016 ‘A blog where attention span really matters’!
My experiences as an observer of venture forums is that they are fast paced and highly charged ‘electric’ events wherein management teams of a growing array of RBSU’s (research based startups) university-based spinoffs, and early stage companies, most all of which are rich in – dependent upon IA’s (intangible assets) give impassioned ‘elevator pitches’ to prospective investors whose expertise and inclination – receptivity to invest have evolved to become increasingly narrow and specialized, as perhaps it should.
The format for venture forums I have attended is that pitches are limited to 3-5 minutes wherein the spokesperson explains their companies’ mission, key-competitive aspects of their innovation, additional research-trials necessary, fiscal projections, business model, why investment is warranted, and how the investments will be applied should an investor deem it a worthy risk. Should a ‘pitch’ be well received, the company representative will likely be peppered with questions from prospective investors or their representatives, one of which is invariably ‘what’s your IP position’?
What’s your IP position…
Of the numerous venture forums attended, the most consistent answer to this albeit over-rated, misunderstood, yet seemingly obligatory questions are…
• has a patent application has been filed (provisional),
• is a patent pending, or
• has a patent been issued?
Through my lens as an intangible asset strategist and risk specialist, the importance attached to achieving formal/official IP (intellectual property) status for one’s innovation is overstated, perhaps variously inflated. And, the consistency which prospective investors ask the IP position question collectively suggest both parties assume conventional IP, patents particularly, are requisites to securing investment capital necessary to proceed. I hold a somewhat different perspective. There are other equally, if not more relevant factors to any innovation under consideration which prospective investors should sort out as part of their ‘invest – don’t invest’ decisions.
True, IP status does provide investors with the necessary legal standing and recourse options should the invested enterprise fail, not meet its projections, or its (protected) proprietary information succumb to infringement or challenge within the typical 3 – 5 year exit strategy plan investors frequently demand. And, yes, patents and other forms of intellectual property are obligatory for WTO and TRIPS signatories.
But, the global business transaction environment is becoming increasingly aggressive, predatorial, competitive, and legacy free. This translates of course to proprietary information, irrespective of its IP status, is, all but certain, to be targeted and sought. That coupled with the persistent challenges and vulnerability to intangible asset (IP) infringement, theft, and/or counterfeiting make an RBSU’s IP position little more than legal symbolism. Should companies elect to pursue other strategies to safeguard their proprietary – competitive advantage intangible assets, i.e., trade secrecy for example, those legal portals for bringing action against the inevitable infringers, thieves, and counterfeiters in locales where a company’s most valuable assets are in play also carries some ambiguity.
Legal – economic safety nets…
Through my lens, conventional IP has less relevance as a legal – economic safety net than startup management teams – prospective investors should assume. Too, the costs associated with mounting an IP infringement – misappropriation suit are significant, if not cost and time prohibitive for resource conscious startups to pursue regardless of case credibility.
It’s prudent for investors and IP holders alike to acknowledge patents and most other forms of IP, no longer serve as…
• standalone deterrents, or
• reliable prognostications of innovation value.
The more relevant venture forum questions are…
I urge prospective investors – venture capitalists to re-phrase their ‘IP position’. For example, rather than merely asking ‘what’s your IP position’ assuming it is an important criterion, perhaps a more relevant and telling question would be…
has the proprietary know how, i.e., intellectual, structural, and
relationship capital that underlie the startups’ innovation and
serve as the cornerstone to the IP on which an investment would be
premised, been adequately safeguarded from its inception!
Important to recognize patents start life as proprietary information and trade secrets…
It’s a well acknowledged adage in the information asset protection arena that patents typically start life as trade secrets and proprietary know how. Therefore, if key – distinguishing know how underlying innovation and its prospective investment has been treated in a cavalier manner…
• absent the requisite minimums of trade secrecy or other best
information asset protection practices
• prior to filing a patent application,
• it’s prudent for prospective investors to ascertain
• the status, i.e., fragility, stability, and commercial-fiscal
sustainability of the assets being considered for investment.
Asset vulnerability, probability, criticality, and speed…
Today, the vulnerability, probability, criticality, and speed which know how, i.e., intellectual and structural capital assets particularly, can be compromised, infringed, misappropriated, or stolen are integral to any ‘invest – don’t invest’ decision.
Before making an investment in intangible asset rich and dependent companies, it’s important to direct probing follow-up questions to company management teams. Doing so will allow prospective investors to more objectively assess whether control, use, ownership, and value of the underlying intangible assets are…
• sustainable relative to an intended exit strategy, and
• reflective of the assets’ functionality and value cycle.
Today, with increasing certainty, ineffectively safeguarded intangible assets (IP) will quickly hemorrhage in value, competitive advantage, and elevate investor’s vulnerability to costly, time consuming, and momentum stifling challenges and exit strategy headaches!
Michael D. Moberly February 9, 2016 ‘A business blog where attention span really matters’.
Think about it. Is it not fair to say that a patent is, in many respects, an organized collection-arrangement of IA’s (intangible assets), i.e., intellectual and structural capital particularly, which have been systematically applied and ultimately embedded in creating something new, novel and/or unique?
Should the above characterization be reasonably accurate, which I believe it is, the key difference between an issued patent and intangible assets is the former can be framed and proudly hung on the wall of the holder’s choosing, while the contributing IA’s, in their non-physical state, are the actual, but uncommunicative enablers – underliers.
Frequently, much to my chagrin as an IA strategist and risk specialist, IP, patents particularly, represent the presumptive ‘brass ring’ which a significant percentage of technology transfer managers, researchers, inventors, and legal counsel set their sights and envision deriving streams of revenue and value as has been conveyed in most every conventional ‘IP 101’ class for the past 100+ years.
My experience, albeit largely confined to university research and RBSU’s, i.e., research based startups, suggest a significant percentage of IP (patent) players are unaccustomed to recognizing the presence of or the contributory role and value emanating from people generated IA’s.
I suspect this oversight attaches to the dominance of patent only strategies held by many companies and organizations coupled with the time honored perspective that an issued patent generally conveys singular (asset) development and ownership. However, the expenditure of time and cost associated with obtaining, maintaining, and defending a patent are escalating which influence the ‘patent only tract’, making it increasingly out-of-reach for many inventors, RBSU’s and the multitude of firms now marked by consistent innovation but absent deep pockets of investment resources.
In today’s increasingly aggressive, predatorial, and winner-take-all global business transaction and R&D environments, patent only tracts, in my view, are in constant states of risk to loss, devaluation, undermining, and/or infringement. Too, there is the widely held, but never-the-less mistaken assumption that an issued patent constitutes a deterrent to, or safe harbor from would be infringers, which it certainly is neither. Indeed, most research projects – products are vulnerable to (a.) becoming entangled-ensnared in various legal disputes and challenges, (b.) failures of effectively marketing, and/or (c.) resources being prematurely withdrawn to sustain the benefits of a patent.
Mr. Moberly is an intangible asset strategist and risk specialist and author of ‘Safeguarding Intangible Assets’ published by Elsevier in 2014, email@example.com View Mr. Moberly’s videos on YouTube at ‘Safeguarding Intangible Assets’.
Michael D. Moberly May 21, 2014 ‘A long form blog where attention span really matters.’
An inventors’ first call…
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 whose business model generally remain exclusive to (1.) patent prosecution, and (2.) patent litigation.
The reason is there is a lot of important work inventors/innovators should achieve before, during, and after a patent has been issued. The time honored inventor/innovator practice of, what I refer to as ‘patent and walk away’ is indeed a poor business strategy.
An intangible asset strategist and risk specialist can perform a valuable, process altering, and strategic function for inventors-innovators which is to identify, unravel, assess, and safeguard the enabling and contributory intangible assets and initiate a ‘what fits best will work best’ for the innovator, their circumstances and investors and the absolutely necessity to sustain control, use, ownership, and monitor asset(s) value, materiality, and risk.
Should be little question by now…
There should be little question in the minds of business management teams and investors today that intangible assets and their first cousin intellectual property (IP) are now integral forces to successful business innovation, operation, and sustainability. The reason, it’s now a globally universal economic fact that intangible assets now comprise 80+% of most companies real value and sources of revenue. In other words, intangibles are the ‘building blocks’ for most company’s growth, profitability, competitive advantage, and sustainability.
But, before we delve further, let’s be respectfully frank. When it comes to IP (patent) counsel, let us not assume all are made from the same cloth. That is, with 25+ years of experience in the intangible asset arena and partaking in literally hundreds conversations with otherwise extraordinarily intelligent and resourceful entrepreneurs and innovators, I remain amazed that such a substantial number recognize one option which they assume will secure their work product that is, a patent.
Anecdotally, I am confident that many, if not most entrepreneurs and innovators, not unlike most business leaders and management teams members assume if one graduates from a professional school, be it law or medicine, etc., most are equally competent in the respective area which they have chosen to specialize, that is, unless something adverse is learned preceding or subsequent to an engagement. Ironically, this constitutes a pedestal of sorts, which we do not reserve for nor convey nearly as quickly, for example, to plumbers, carpenters, and the myriad of other craftsman which we are probably more likely to have direct and often times personal contact are able to observe and assess the outcome of their work, often immediately, compared to say the quality of patent prosecution and issuance. For the latter, it may take months, or even years for ‘quality’ to be assessed or tested relative to (a.) one’s motive for initially seeking a patent, and/or (b.) the litigation, disputes, challenges, etc., which unfortunately, seem, in some sectors, to be a growing inevitability of merely doing business when intangible assets such as IP are in play.
Entrepreneurs, innovators, investors, management teams, boards, and D&O’s who still consider IP in general, and patent prosecution – issuance in particular, as merely constituting an occasional service function that can be (a.) completed with equal excellence, and (b.) sustain the rigors of global competitiveness and litigiousness. In other words, those clinging to such views, are, in my judgment, behind the aggressivity and predatorial aspects embedded in 2014+ business curve and the instantaneous global business transaction environments in which the mantra is winner-take-all.
Howery Survey Of Investor Attitudes on IP Protection
In fact, most respondents to a former Howery law firm ‘Survey of Investor Attitudes on IP Protection’ assert that companies that lack an effective IP (intangible asset) strategy can have a substantial detrimental effect on company performance. I couldn’t agree more.
Again, in today’s go fast, go hard, go global economic – business transaction in which IP and other forms of intangibles are routinely comprising higher percentages of company’s value and aspired success, investors and financial analysts are attaching more credence to intangibles, particularly those in the form of intellectual and structural before making their ultimate invest – don’t invest decision. In fact, one in four of the Howery Survey respondents stated they have actually turned down investment opportunities due to a company’s ‘inadequate approach to IP’ which could encompass many things, including patent quality!
Fully 95% of the Howery survey respondents reported that it is no longer sufficient, in the context of investment decisions, for a target company to merely own IP. But, in addition, the IP should be both
The respondents also reported, in substantial numbers, that before a favorable investment decision would be made, the (asset) due diligence should determine and assess whether the target company has specific (best practice) strategies in place, to not only exploit the assets, but also ensure they are tactically and strategically aligned with asset safeguards and competitive advantages.
The bottom line, in my view, in conjunction with the Howery Survey findings, is this; companies that presume conventional IP enforcement protections somehow equate with patent prosecution quality and are thus singularly adequate to attract investors are finding instead, those enforcements, as advertised, are no longer sufficient (standing alone) to favorably satisfy prospective investor demands vis-a-vis their invest – don’t invest decision criteria.
In other words, to elevate the probability of attracting serious investors, companies should also have in place (a.) comprehensive and well defined and integrated strategies to effectively safeguard the key and contributory intangible assets to reflect and mitigate when – where necessary, today’s increasingly aggressive, predatorial, and winner-take-all business transaction environment, and (b.) seamlessly integrate same into a viable competitive strategy for utilizing and exploiting the assets. (Adapted by Michael D. Moberly from the work of Howery, Simon, Arnold & White’s Survey Of Investor Attitudes on IP Protection.
Patents are suitable for framing…
It’s important for entrepreneurs and innovators to recognize that patents are one of four types of intellectual property, i.e., trademarks, copyrights, trade secrets, (and patents) each of which is a subset of intangible assets. The primary difference is that a patent, once issued by the U.S. Patent and Trademark Office (USPTO) can assume a tangible or physical property insofar as the issuance certificate can be framed and hung on an office wall as a testament to an inventor’s – innovator’s hard work and being first to file. Too, having a patent issued conveys a sense of usually well warranted personal achievement that is immediate and very personalized, i.e., manifests as professional expertise and credibility.
But frequently, much to the chagrin of the intangibles’ profession, intellectual property, patents particularly, represent a presumptive and much revered brass ring which technology transfer managers, researchers, inventors, and legal counsel routinely set their sights. Anecdotally, having served in academia for over 20 years, I am inclined to believe this may be so, merely because there is no intangible asset strategist and risk specialist available to effectively articulate lesser expensive and more protectable options that can achieve the same desired outcome.
Nourishing ‘patent only’ strategies…
Anecdotally, I suspect, the personal reverence attached to an inventor’s or organization’s patent (only) ‘thinking’ is rooted in an absence of operational understanding and appreciation for the increasingly critical practices and operational preludes which are now necessary to sustaining control, use, ownership, and monitoring the value, materiality, and risks to the intellectual and structural capital embedded in any patent application (prosecution).
Respectfully, contributing to patent only strategies, is the flawed and very unrealistic assumption that an issued patent constitutes a standalone deterrent to, or safe harbor from the ever growing global cadre of would be infringers and purveyors of economic – competitive advantage espionage. Too, the costs associated with defending patents in disputes and challenges are considerable, making a ‘patent only’ tract, in my view, potentially even more risky. Too, conventional patent only strategies can literally be out-of-reach for frugal inventors and innovation regimes, absent committed and deep pocketed investors.
Too, its quite fair to say that in today’s increasingly aggressive, globally predatorial, and winner-take-all (global) R&D and business transaction environments, patents, like most intellectual – structural capital based assets, are in persistent states of risk to infringement, counterfeiting, misappropriation, theft, etc., from a host of legacy free players, independent (information asset) brokers, and assorted state-sponsored entities most of whom are engaged in some form of economic (industrial and competitive advantage) espionage.
Faux affirmation of patent only strategy…
Venture capital forums are usually private events in which inventors and prospective investors, i.e., venture capitalists meet. Those who have participated in such events know that inventor’s are seeking investment, a critical component of which is inventors making the proverbial ‘elevator pitch’ to an audience of prospective investors, in which the inevitable question, i.e., ‘what is your IP position’ will be asked.
In most instances, prospective investors prefer to hear inventors state that they have already secured a patent, or, in the alternative, a patent application has been filed. The primary reason is that prospective venture capitalists and investors perceive patents to be somewhat of an insurance policy for the invention they may be considering investing. That is, an issued patent provides both the inventor and the company with (legal) standing to pursue infringers and defend against challenges and disputes.
Every inventor I have witnessed presenting at a venture forum, their answer to the ‘what is your IP position’ question is consistently in the affirmative because they fear, if not stated, it’s assumed to be a deal breaker to any subsequent ‘invest – don’t invest’ decision. In this context, patent prosecution is an expensive obligation levied against the inventor which (a.) presumably conveys faith in their invention, and (b.) which furthers the notion that a patent only strategy is a requisite to invention investment attractivity. But, in my view, this question is a faux affirmation that a patent only strategy is the preferred and necessary option. I suppose however, at the 30,000+ feet strategic altitudes which prospective investors – venture capitalists tend to function at such early stages, a very conventional insurance policy is meaningful.
But, my own experiences suggest that, with few exceptions, there are few researchers – inventors working or operating at the same 30,000+ foot altitudes as prospective investors and venture capitalists. Instead, most researchers/inventors are working, quite literally, at ground floor levels, and should come to realize that 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 patent prosecution process goes smoothly, the real value of – underlying foundation of an issued patent lies in the invention teams’ intellectual, structural, and relationship capital, i.e., intangible assets. Regardless of being issued a patent or not, those intangibles, I can assure readers, remain very much at risk, risks which the presumed deterrents’ and enforcements associated with conventional intellectual properties fall short.
Many opportunities to stumble…
Any research product, i.e., an issued patent and the underlying and contributory intellectual and structural capital can become entangled and/or ensnared in a sundry of legal disputes and/or challenges, anyone of which can, in addition to civil action, cause investments to be withdrawn or altered significantly thus minimizing furtherance of the invention.
Intangible assets are the enablers of IP…
In far too many instances, I find the intangible asset offspring, which I refer to as the 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, 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., without fail, every SEO I have encountered, ther business development – marketing lead statement is consistently 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 (business) conversions that website dependant business persons mistakenly assume will evolve merely because something one has written has successfully maneuvered its way through the ‘Google algorithm gods’ and eventually found it’s was to page one, temporarily. The presumption is, that when Internet searches are initiated, seldom does the searcher go beyond page one of their search.
Yes, entrepreneurs can rationalize that all it takes is one good (the right) ‘conversion’ to kick start a company down the path to riches and sustainability. But, reaching ‘page one of Google’ may not be all that a startup company really needs to achieve in order to achieve the necessary level of (financial) sustainability.
Inventors and early stage firms, spinoffs and startups will also need a well-coordinated and focused strategy that effectively utilizes an array of internet resources and social media that presents many different options for an innovation’s exposure and conversion potential, not merely ‘getting on page one of Google’.
This post was inspired by a May 15, 2014 webinar produced by the Intangible Asset Finance Society with speakers John Kepler and James Singer, moderated by Jonathan Salem Baskin.
Michael D. Moberly March 31, 2014 ‘A long form blog where attention span really matters’.
It’s all about sustaining control, use, ownership and monitoring the value, materiality, and risks to intangible assets, particularly intellectual and structural capital. And, when 80+% of most research evolves from intangible assets, i.e., intellectual and structural capital in particular, having an intangible asset strategist and risk specialist available can make the difference between exasperating ‘minimalization’ and exuberance!
Having served in academia for 20+ years myself, it’s certainly no secret that one distinguishing factor related to university-based (faculty) researchers (inventors) is that they generally have the opportunity to pursue – engage in research that reflects their academic interests which they have dedicated themselves. This generally involves multiple years of rigorously testing hypotheses which occasionally culminates in a patentable and/or licensable product with future commercialization potential.
Achieving this level of academic excellence, i.e., patentability is seldom a standalone activity. Instead, it entails developing and maintaining positive collaborative – working relationships between faculty researchers and TTO director and staff, both of which are essential components to achieving satisfying and optimistically lucrative (scientific) outcomes for all parties. So, faculty researcher (inventor) relationships with their universities’ Technology Transfer Office (TTO) can often be complicated and even contentious, but need not be so!
Competing in the global R&D environment…
Those familiar with R&D processes and what’s necessary to successfully move a scientific project along the continuum to reach patentability stage and perhaps commercialization in its market space recognize that most all R&D, be it university or private sector based, are competing in an increasingly intertwined, aggressive, and often times predatorial marketplace where boundaries have become blurred between domestic and international business allegiances, prompting, in many respects, well warranted risks and cautions which produce more challenges for institutions and investors insofar as distinguishing – assessing the most promising (patentability, commercialization) strategies within a particular field.
More specifically, and to be purposefully redundant, a fundamental concept that warrants more recognition by faculty researchers and university TTO managers alike, is that the broader research and development environment has truly become globalized, which in my niche of the world translates as being increasingly competitive, aggressive, predatorial, and often culminates in winner-take-all outcomes. Necessarily, the competition for researcher intellectual and structural capital competencies is quite intense, sometimes bordering on the fanatical.
Unfamiliarity, naiveté, or acting dismissively of the environment I have characterized here will (can) contribute to – exacerbate the growing array of problems and challenges insofar as securing and retaining strong defensive – offensive grounding in intellectual property, patents particularly. If, for example, a faculty researcher/inventor has the good fortune, skill, and necessary long term funding to develop a compound or device that ultimately can be readily circumvented and/or counterfeited. Herein lies unfortunately, an all too frequent problem in which one’s work ends up being exploited, not by its rightful owner, rather by predatorialy motivated economic and competitive advantage adversaries globally.
Needless to say, when such risks are dismissed or worse in my view, a feigning of unawareness or adopting a position which suggests it’s not their responsibility to elevate (risk) awareness within their respective (institutional) research community it’s disconcerting and demoralizing to faculty researchers – inventors. More so when they learn their work/research product will face challenges, legal and otherwise, which an institution may opt to not engage because the challenge is difficult, time consuming and very costly to effectively enforce or ‘win’. When such circumstances arise, as well as many others, one can be assured it will render a projects’ attractiveness to prospective licensees, investors, and/or commercialization opportunities to be less than might what otherwise be expected, in other words significantly minimized.
Strategic solution paths…
A universities’ technology transfer office is and should be the starting point for faculty researchers – inventors to disclose, or fully unravel, their invention and acquire the most current strategic counsel to ensure the most promising and worthy research, i.e., technologies are guided to their natural and hopefully lucrative and beneficial conclusions. A not infrequent personal – professional reality is that at some point during a projects’ disclosure, unraveling, and technology transfer process is the discouraging reality that that not all discoveries warrant patentability and commercialization.
A complicating factor, one which university technology transfer managers know all too well, is that a technology transfer process can take months, and in some instances years – to fully evolve and arrive at a point of final (university) recommendation or decision. For example, the issuance of a patent or consummation of a licensing agreement, are events which involve mergers’ of expertise, good fortune, good timing, and investor/funder interest.
But, it is not my intent to place the onus solely on TTO managers, rather, faculty researchers – inventors seeking a potential (public) break through or ‘turning point’ moment for their specific research, often times they are already acutely aware of the global competitiveness and predatorial nature associated with R&D environments in general. In other words, a faculty researcher will always find it in their interest to consistently engage in best practices insofar as effectively managing and safeguarding their research.
A university’s technology transfer office is typically where the expertise lies to convert inventions into commercially viable products if and when feasible. Faculty researchers and/or inventors need experienced and industry sector expertise to aid them in navigating, assessing, and offering recommendations on strategies that hopefully lead to patentability and/or commercialization which can come from intangible asset strategists and risk specialists.
Reader comments and inquires are always welcome at 314-440-3593 (St. Louis) or firstname.lastname@example.org
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 email@example.com
Michael D. Moberly – September 25, 2012
Wouldn’t it seem reasonable, even plausible, to suggest that particularly innovative companies, like, for example, Technology Reviews’ 50 Most Innovative Companies for 2012, www.technologyreview.com/tr50/2012 would likely produce (and logically) possess more, and perhaps a higher level of intangible assets than say, less innovative companies?
Let me say at the outset, being an advocate of and strategist for intangible assets, I generally hold the view that most every company, regardless of size, industry sector, or location, produces and possesses intangible assets. It’s often a matter of revealing and unraveling them, and identifying strategies to exploit – utilize them in ways that fit best with the holder (company).
Technology Review’s annual list of the 50 most innovative companies are, relative to TR’s criteria, businesses whose innovations influence (force) other businesses to alter their strategic planning and/or course. TR50 firms are nominated by editors of Technology Review, who distinguish companies which, over the preceding year, have…
- demonstrated original and valuable technology
- are bringing that technology to market at a significant scale, and
- are clearly influencing their competitors.
Eighteen of the companies selected for 2011’s TR50, remain on their 2012 list, with seven firms achieving a third appearance. Perhaps more interesting, at least in my view, are 32 companies which TR selected for the TR50 2011 list that are no longer on the list, which readers can assume no longer meet the above (TR’s) criteria.
One example being, TR states that some companies are excluded from the list because of a decline in the prospects of an entire (their respective industry) sector. A more specific example TR sites, has to do with advanced-biofuel companies which were strongly represented on TR’s list in both 2010 and 2011, but not in 2012. The reason, TR offers, is that the bio-fuels sector as a whole has generally not scaled up production to a level that can begin to make sustainable inroads relative to the use of conventional oil or otherwise influence the fuel and transportation industries’ respectively. That’s not to suggest however, that advanced bio-fuel technology is now absent potential, rather, for 2012, this sector merely conveys less (sustainable) potential than it did in 2010 and 2011.
Dr. Ken Jarboe, President, Athena Alliance, www.athenaalliance.org, a highly respected, Washington-based ‘think tank’ on the intangible economy, agrees in part with my opening premise, by saying there would be a presumption that TR 50’s are stronger in intangibles than most, however, he expresses some skepticism whether this presumption should go so far as to include the full range of intellectual capital.
More specifically, Dr. Jarboe points out that TR 50’s are traditionally strong in IP (intellectual property) and technology. Too, he says, they are probably strong ‘right now’ (emphasis added) in strategic capital and structural capital primarily because TR’s criteria for inclusion in the 50 most innovative companies includes both “vision” and “execution”.
Having strong strategic and structural capital translates, Jarboe says, as company sustainability, not just right now, but for extended, perhaps indeterminate periods. In the case of TR50’s,
Jarboe quite correctly states they admit that they remove companies from the their list because, among other reasons, they no longer demonstrate sufficient vision and/or execution. TR specifically mentions Netflix and Amazon as examples. Companies that have strong strategic and structural capital Jarboe says, should not quickly lose (their) vision and/or ability to execute, both of which are key contributors to any company’s overall sustainability.
The dropping of Amazon from the list raises another question, Jarboe says, specifically about relationship capital. The reason given by TR for removing Amazon from the list had to do with the consistent complaints about their (new) Kindle Fire. But, Jarboe wisely and characteristically asks, was that a case that demonstrated weak intellectual capital, or was it the case that strong relational capital will help Amazon prevail over the launch glitches associated with Kindle?
So, while Jarboe believes there is a possible relationship between intangibles and the TR50, but with this important caveat, i.e., the intangibles component is much broader and much deeper, with the TR50 really being about the successful deployment, commercially speaking, of attractive technology and accompanying applications, and not about intellectual capital, per se.
TR states in other instances, companies lose, neglect, and/or become less attentive to the vision that made them initially worthy of the TR50. One such example is Netflix, which TR selected for its 2011 list because it piggybacked a video-on-demand service onto its existing DVD-by-mail subscriptions. Netflix had already disrupted the conventional business model of video rental stores and then cleverly engineered a maneuver to prevent itself from being disrupted in turn by streaming video technology. But later in 2011, Netflix endeavored to split the streaming side of its operations from its DVD service. This proved to be a less than popular decision with its substantial number of users who rather quickly became irritated which manifested in well-publicized ridicule which led to hundreds of thousands of subscribers abandoning Netflix before they could reverse course. As we now know, this led to a most unfortunate predicament in which Netflix was no longer able to direct its own (strategic) agenda, and certainly within the entertainment industry.
And finally, TR says, some companies merely fell off their list because they were crowded out by newcomer firms communicating new and all-the-more larger ideas that stir up conventions.
Comments regarding my blog posts are encouraged and respected. Should any reader elect to utilize all or a portion of this post, 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. And, I always welcome your inquiry at 314-440-3593 or firstname.lastname@example.org
(For this post, a special thanks goes to Dr. Ken Jarboe, President, Athena Alliance www.athenaalliance.org for his insights and perspectives and to the fine book that I routinely rely on, Intangible Capital: Putting Knowledge to Work in the 21st Century Organization by Mary Adams and Michael Oleksak.
Michael D. Moberly December 13, 2011
A ‘research liaison’ should contribute to corporate – university (sponsored) research projects by: sustaining (protecting and preserving) unencumbered control, use, ownership and monitoring the value of both parties’ investments, i.e., the projected stream of intangible assets, IP, competitive advantages, and (proprietary) know how evolving from the research.
Unfortunately, there’s a fairly long trail of melodramatic intrusions in academic research – scientific processes with an equally long trail of scientists and universities interpreting those initiatives as unwarranted and disrespectful attempts at oversight and management of university-based research. When handled poorly or heavy-handedly such initiatives:
- routinely collide with the time honored principles of open scientific communication and academic freedom, and
- are quick to spark emotional, polarizing, and project stifling debates in academic units and research labs, especially those unaccustomed to the necessity and realities of properly safeguarding information (research work products).
An unfortunate, but very true reality is however those principles (academic freedom, open scientific communication) are routinely being exploited, outpaced, circumvented, and undermined today by:
- very determined and extraordinarily sophisticated and predatorial data mining and global business-competitor intelligence operations, and
- the inevitable challenges posed by ’trusted insiders’.
When either taint a research process, an unwelcomed outcome for both the university and corporate sponsor is that time, resources, and investment in research and its valuable products’, in the form of intangible assets, knowhow and competitive advantages, are compromised, relinquished, or lost. These, in turn, will usually prompt an array of costly, time consuming, and embarrassing challenges and disputes, any one of which can adversely affect:
- the corporate sponsor in terms of not receiving the projected benefits and competitive advantages initially conceived when the research partnership was formed, and certainly
- the universities’ image, reputation, and goodwill as a prospective ’research partner’.
Necessarily then, the role-responsibility for a ‘research liaison’ (among other things) is to:
- serve as an enabler and facilitator to research collaborations, partnerships, and processes
- provide momentum to the administrative processes associated with executing university-corporate research partnerships, and
- build and strengthen bridges between researchers, scientists and corporate research sponsors through respectful and knowledgeable dialogue to elevate receptivity of research units’ culture to safeguarding and preserving the value of intangible-information based assets and intellectual capital in ways that simultaneously respect academic research traditions and the principles of the Bayh-Dole Act.
Today, in the nanosecond world of at will global communication and collaboration, decisions about when, where, and the circumstances in which research work products are disseminated have become more blurred and certainly, more risky!
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Do Accounting Systems and Language Hamper Creative Business Strategies Involving Intangible Assets and IP?
Michael D. Moberly August 23, 2010
For management teams, boards, entreprenuers, and others operating in knowledge intensive (IP, intangible asset, intellectual capital) sectors, it’s not particularly noteworthy to point out there are significant differences between the accounting and intellectual property – intangible asset communities.
Those differences are largely conceptual. They evolve around accounting language and systems that tend to focus on production factors and very tangible assets. The rigidity of accounting systems and language, and the growing universality of accounting standards does not allow – leave much room for reflection on (creative, alternative) business strategies that are lead – influenced by intangible assets and/or intellectual property.
Accounting is largely a mathematical language that allows companies to communicate about their respective business performance in a manner that is essentially free from cultural connotations, i.e., global universality of accounting standards. Accounting language follows a code of officially sanctioned standards that are recognized by both the state as well as the international (accounting) community. Without such language, admittedly, business perceptions and understandings could not be maintained.
Accounting language and systems are governed by U.S. (GAAP) and international (IFRS) standards wherein factors of production and performance are dominant and subsequently under-play, if not utterly ignore, the construction (evolution) and value of internally developed proprietary knowledge, i.e., IP and other intangibles that routinely contribute to the formulation and execution of business strategies.
Respectfully, today’s accounting language and systems do not do much either for communicating-advancing the economic fact that we’re literally in the midst of a knowledge, some say, intangible asset- based economy in which increasing percentages of company value, sources of revenue, sustainability, and foundations for future wealth creation lie in – directly evolve from intangible assets and IP.
Rather, current accounting language and systems, quite literally, frame the context in which most businesses function and also set the parameters for how and under what circumstances IP and intangibles can actually be applied.
How IP and intangibles are treated (by accountants) depends primarily on whether the assets were developed internally or acquired externally. For example, internally generated/developed IP is immediately expensed and appears as a loss, rather than as revenue. Thus internal R&D initiatives and investments in intellectual property-intangible assets constitute (are characterized as) costs to a company rather than drivers of value, revenue, and future wealth creation, etc. This practice (accounting standard) makes it all-the-more challenging to trace (unravel) how such assets as IP-based R&D, design, and brand innovation, etc., are generated.
Thus, current accounting language and systems, essentially force businesses to speak about (address their) business performance in a standardized and ritualized manner with virtually no opportunity for inserting creative (alternative) language or expressions.
And, therein lies the basis for many of the current challenges between accountants and advocates of full and creative utilization of intangibles and IP; the inability to respectfully find common ground to converge both language and systems to improve opportunities for consistently putting those assets in play, along with monetization and commercialization.
(This post was adapted by Mr. Moberly from the work of Professor Roya Ghafele and her article titled ‘Accounting for IP?’ recently published in the Journal of Intellectual Property Law and Practice.)
The ‘Business IP and Intangible Asset Blog’ is researched and written by Mr. Moberly to provide insights and additional views for company management teams, boards, and employees to aid in identifying, assessing, valuing, protecting, and profiting from their intangible assets. I welcome and respect your comments and perspectives at firstname.lastname@example.org.
Michael D. Moberly August 19, 2010 (Part II)
This is the second of a two-part post to provide readers with insights into ‘the 2008 Berkeley Patent Survey’ with respect to how software start-up firms (a.) perceive, (b.) use and (c.) are affected by patents.
And, again, please trust me on this, if you are an entrepreneur, part of a tech company management team, board member, or part of the technology investment community, this post should be on your ‘must read’ list.
The surveys principle investigators obviously wanted to know more about why some tech entrepreneurs choose to forgo patenting? To obtain the necessary insight, they posed two sets of questions framed as follows; (1.) for the last innovation for which the (your) firm chose not to seek a patent, what factors influenced this decision?, and (2.) what was the most important factor in that decision?
The costs (expense) associated with actually obtaining and enforcing patents (their intellectual property rights) were cited as being both the first and second most frequent explanation (response). While the ease of inventing around the innovation and satisfaction with trade secrecy were also cited as influencing factors for software start-up firms not to seek patents, seldom were they considered the most important factor.
Interestingly, 40+% of the software executive respondents cited the unpatentability of the invention as a factor in their decision to forgo patenting, with 25% (+/-) rating unpatentability as being the most important factor.
However, the investigator’s remarked that it is difficult to know precisely how to interpret the ‘unpatentability finding’. One possible explanation they said, may be that the software entrepreneur respondents believed that patent standards of novelty and non-obviousness, etc., are so rigorous which lead them to feel their innovation would not likely satisfy patent requirements. Another possible, perhaps more esoteric, explanation offered by the investigators to this question is that a significant number of the entrepreneurs hold philosophical and/or practical objections to patents in their field, i.e., software.
Another important and very relevant question presented in the survey was how important are patents to achieving competitive advantages. Interestingly, respondents ranked patents (literally) dead last among seven strategies for achieving competitive advantage.
It’s important for readers to recognize that the relative unimportance of patents for competitive advantage given by survey respondents in the software field contrasts sharply with the perceived importance of patents in the biotech industry, where patents are ranked as the most important means of achieving competitive advantage.
Instead, software start-ups regard ‘first-mover’ advantage as the single most important strategy for achieving competitive advantage, followed by ‘complementary assets’ , e.g., providing services for licensed software or offering a proprietary complement to an open source program, etc, in other words, intangible assets. Interestingly, these two strategies for achieving competitive advantage (i.e., first mover and complimentary assets) outweigh actual intellectual property rights.
Among intellectual property rights though, the survey findings revealed copyrights and trademarks, followed closely by (trade) secrecy and difficulty in reverse engineering as outranking patents as an important strategy for achieving competitive advantage.
So, what incentive effects do patents have for tech entrepreneurs? With respect to the four types of innovation, (1.) inventing new products, processes, or services, (2.) conducting initial R&D, (3.) creating internal tools or processes, and (4.) undertaking the risks and costs of commercializing innovation, the survey investigators applied a scale, where 0 = no incentive, 1 = weak incentive, 2 = moderate incentive, and 3 = strong incentive.
Somewhat surprisingly, the respondents reported that patents provide weak incentives for engaging in core activities, such as invention of new products and commercialization. On the other hand, biotech and medical device firms reported that patents provided moderate incentives.
So, here’s the paradox. If patents provide only a weak incentive for investing in innovation among software start-ups, why are two-thirds of the VX firms (largely VC-backed) and at least one-quarter of the D&B firms seeking patents?
The answer to this paradox, according to the survey investigator’s, may actually lie in the perception held among software entrepreneurs. That perception is that patents may be perceived as important to potential – prospective funders, such as venture capitalists, angel investors, commercial banks, and friends and family.
The investigator’s base this answer on the (survey) finding that sixty percent of software start-up respondents, who had actually negotiated with venture capitalist’s, reported that that they perceived patents to be an important factor in the VC’s invest – don’t invest decision. Between 40% and 50% of the software respondents also reported that patents were perceived to be important to other types of investors, such as angels, investment banks, and other companies.
So, what’s the larger message from this surveys findings? In my view, it’s that tech entrepreneurs ought not assume patents are the only, or necessarily the best strategy (option) for achieving success and competitive advantage. Each form of intellectual property, i.e., patent, trademark, copyright, and trade secrecy carry upsides and downsides. And, perhaps equally important, tech entrepreneurs ought not overlook or dismiss the complimentary (intangible) assets that routinely accompany and/or evolve from innovation to become valuable and competitive advantage driving assets!
(This post was adapted by Mr. Moberly from the work of Professor Pamela Samuelson’s article in ‘O’Reilly Radar’ and the recently published article, “High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey.” )
The ‘Business IP and Intangible Asset Blog’ is researched and written by Mr. Moberly to provide insights and additional views for company management teams, boards, and employees to aid in identifying, assessing, valuing, protecting, and profiting from their intangible assets. I welcome and respect your comments and perspectives at email@example.com.