Archive for 'Law Firms'

Professional Service Firms’ Intangible Asset Deliverables A Lucrative Game Change Strategy!

May 11th, 2016. Published under Intangible asset training for management teams., Intangibles as strategic assets, Law Firms. No Comments.

Michael D. Moberly May 11, 2016 A blog where attention span really matters!

Expand deliverables to include intangible assets. Create new sources of sustainable revenue, enhance firm value, reputation, and competitiveness. Rationale…

• It is an irreversible economic fact that…80+% of most company’s value, revenue, competitiveness, and sustainability today lie in – evolve directly from IA’s developed internally or acquired externally.

• In every business activity, initiative, and/or transaction…valuable – competitive IA’s will be in play and at risk.

• Delivery of professional services are legitimately premised…on client companies, management teams, and boards recognizing their fiduciary responsibility, arising from Stone v Ritter, to ask…

…is their company properly positioned, insofar as possessing the expertise and skill sets, to identify, unravel, develop, bundle, utilize, and extract – exploit as much value and competitive advantage as possible from its IA’s, while simultaneously safeguarding and monitoring risks to those assets’, which, if materialized, are all but certain to adversely affect the assets’ materiality, contributory value, competitive advantage, and sources of sustainable revenue.

• Intangible asset identification…assessment, exploitation, and risk mitigation are integral to client company’s economics, competitive advantages, and (global) commercial success.

• Acquiring sufficient operational familiarity…of IA’s to design, market, and deliver client specific services are now fundamental requisites to professional service firm’s strategic planning, expansion, sustainability, and revenue generation.

• Each professional service firm deliverable…is obliged to recognize strategies to exploit – apply client companies unique knowhow, particularly where there is clear IA intensity and dependency held in intellectual, relationship, structural, and creative capital.

• Its imprudent for professional service firms to characterize…client company’s IA’s are mere addendums (subordinate) to conventional IP (intellectual property).

• Operational familiarity with IA’s are legitimate entrées for professional service firms to…re-engage existing clients and engage new – prospective clients…

• Professional service firms that frame their services to encompass IA identification, stewardship, management, and stewardship can expect 15+% growth…in billable client services in year one following effective marketing and delivery.

Law Firm Marketing Intangible Asset Services

August 20th, 2014. Published under Intangible asset strategy, Law Firms. No Comments.

Michael D. Moberly   August 20, 2014   ‘A long form blog where attention span really matters’!

Intent…

The globally irreversible economic shift away from tangible (physical) asset business dominance to intangible (non-physical) asset business dominance has paved the way for law firms to offer differentiating, relevant, and client specific services related to the management, stewardship, and oversight of their intangible assets. To believe otherwise would certainly constitute an irreparable misreading of the global economic and competitive advantage tea leaves.

This post provides compelling and viable rationales why boutique intellectual property and full service law firms will find it prudent, lucrative, and produce strategically durable competitive advantages and differentiators by delivering intangible asset specific services in business clients.

Why law firms should take note…

One reason emanates from Stone v Ritter (911 A.2d 362 (Del. 2006) which would obligate company leadership, akin to a fiduciary responsibility, to achieve sufficient operational familiarity with their intangible assets to provide consistent and effective asset stewardship, oversight, and management. More specifically, keep boards and significant stakeholders apprised of the status of key, revenue producing intangible assets.

Through my lens, Stone v. Ritter legitimizes opportunities for law firms, so inclined and inspired, to acquire the relevant skill sets to enable articulation and delivery of a variety of intangible asset services to today’s more enlightened and receptive business clients regardless of sector, size, or location. The skill sets will accrue as firm differentiators and competitive advantages to help mitigate stagnating revenues.

Comprehensive intangible asset services…

Collectively, the global universality of intangibles’ and business client’s increasing recognition they are valuable contributors – underliers to company profitability and sustainability, constitutes valid rationales and positioning for motivated law firms to respectfully engage both existing and prospective clients with proposals for intangible asset services. The addition of these services produce realistic potential for a law firm to become the initial and exclusive provider of a range of long-lasting intangible asset related legal services because intangible assets are always in play, and thus relevant components to every business client’s operations, initiatives, and/or transactions they routinely engage.

In a global business environment in which 80+% of most company’s value, sources of revenue, and ‘building blocks’ for growth, profitability, and sustainability evolve directly from intangible assets, it’s no particular secret that conventional financial statements and balance sheets, wherein intangibles largely go unreported, under-valued, and otherwise, unaccounted for, do not provide a complete picture of a company’s soundness, its value, or its strategic and competitive advantage health and potential.

80+%…

It’s an undisputed and irreversible economic fact today that 80+% of most company’s value, sources of revenue, and ‘building blocks’ for growth, profitability, and sustainability today either lie in or directly evolve from 15+ distinct categories of intangible assets ranging from intellectual, structural, and relationship capital, to reputation, brand, R&D, contracts, and hybrid (proprietary) technologies, etc.

Also emanating from this economic fact is the reality that business clients will, with increasing frequency, become fiduciarily obligated to seek legal advisory services variously related to the stewardship, oversight, management, commercialization, and safeguarding of the array of nuanced and company centric intangible assets they produce internally or acquire externally.

Original horizonal thinking and planning…

Law firm strategic planning is no longer a managerial luxury rather it has become a necessity for assuring firm sustainability, profitability, and brand. Collectively, the new realities associated with intangible asset business dominance, warrant levels of thinking and planning that permit horizontal sighted law firms and attorneys the latitude to secure the necessary skill sets to accommodate the expanding range of legal service opportunities emanating from the permanent role of intangible assets in today’s increasingly complex and globally intertwined business incubation, development, growth, and transaction environments.

Intangible asset intensive companies growing globally…

There is no other time in business governance – management history when steadily rising percentages of company value, sources of revenue, and growth potential originate, almost exclusively, from intangible assets.

The contributory value which unique and frequently company/operation centric (proprietary) intangible assets make to company’s value, revenue, competitiveness, brand, and market position, etc., are all too often, under-appreciated, undervalued, un-protected and ultimately their value becomes diluted or melds into open sources to be used by competitors..

Intangible assets are no longer mere tools to manage tangible (physical) assets. Instead, intangibles’ are frequently stand alone commodities that can be developed, positioned, and utilized to produce revenue, enhance competitive advantages, and add value to a company.

But, intellectual property and other forms of (proprietary) intangible assets, particularly intellectual, structural, and relationship capital, can advance a company economically and competitively, only so long as their control, use, ownership, value, and materiality are monitored and sustained.

However, the time frame when company’s can realize the most value from their intangible assets lies in their respective contributory value and functionality (life) cycles both of which are being compressed today, due in no small part to (a.) lower barriers to market, supply, and distribution chain entry by competitors, and (b.) rapid profits accruing to globally predatorial product/service piracy and counterfeiting operations that consistently pollute and de-value legitimate asset supply chains.

Forward looking prudence…

Staying out front of law firms’ go fast, go hard, go global business clientele is best achieved by developing and articulating proprietary and client specific intangible asset services that will accommodate the inevitable and irreversible needs and demands of current and future clients.

Adding intangible asset services to law firms’ repertoire will be disruptive…

For some attorneys and firms, delivering services specific to intangible assets will be misinterpreted as operationally disruptive to time honored conventions for delivering client services and therefore, dismissed. Respectfully, I do not believe such machinations are or should be relevant in the increasingly aggressive, predatorial, and winner-take-all professional services sector which we are in the midst.

Admittedly, not every firm’s business clients have achieved full operational familiarity with their intangible assets to articulate, with specificity, what legal services they need now and will need in the future. Through my lens, that’s a strong rationale why law firms should be tactically and strategically prepared now as the need and demand for such services rises, which it is sure to do.

Law firm re-boot, tactical and strategic speed…

Again, through my lens, what’s being proposed here is not exclusively an if or when, proposition. Rather it represents a rationale why law firms should consider re-booting themselves to inexpensively and rapidly acquire the capacity to achieve a level of professional comfort and expertise to engage clients’ about identifying, unraveling, distinguishing, exploiting, safeguarding, and monitoring the value, materiality, and risk to their intangible assets.

More specifically, while many law firms’ tactical speed, i.e., the efficiencies related to delivering client services, etc., remain important, continuing to be dismissive about firm’s strategic speed, i.e., developing proactive client services that directly reflect globally universal changes in economics is critical to firms’ sustainability. In other words, law firm strategic planning should be designed and executed so as to ‘avoid continuing to skate where the puck was, rather skate to where the puck is now and will be in the future’!

My counsel…

My counsel to law firms is to engage in strategic planning that includes a strong and collaborative vision that encompasses a firms’:

  • organizational structure in terms of how its various practice areas and expertise can be collaboratively aligned to better address business clients’ intangible asset (service) needs, and
  • become more accommodating to the inevitable and collective (global) universalities which the dominance of intangible assets produce.

In other words, attorneys’ and their respective practice areas are now obliged to consider how they may achieve a collaboratively lucrative solution insofar as providing intangible asset services. In other words, help structure the firms’ future to meet its future!

As always, reader comments are most welcome.

Law Firm Marketing Plan Must Include Intangible Assets

June 16th, 2014. Published under Law Firms, Strategic Planning. No Comments.

Michael D. Moberly    June 16, 2014    ‘A long form blog where attention span really matters’.

So why shouldn’t every law firm’s strategic plan encourage achieving operational familiarity with business clients’ intangible assets…?

Frankly, in 2014, and for the foreseeable future, I would be very hard pressed to devise a rationale why every law firm should not achieve a fully operational familiarity with their business clients’ intangible assets, and incorporate same in their strategic planning as tools to…

  • expand and enhance firm brand and become a leader in intangible asset stewardship, oversight, and management, which in turn will produce more engagements, and
  • enhance firm competitiveness by providing legitimate grounds to re-engage existing clients, and engage new/prospective clients.

Law firm’s that continue to be dismissive of strategic planning that includes a full array of intangible assets but do not adjust their client services accordingly should expect to experience stagnation on various levels internally and externally, e.g., sustainability of client relationships, client satisfaction, and service deliverables. So, it’s not a case of when, rather how law firms can build the necessary receptivity and ultimately consensus, initiated by managing partners, to actually achieve a level of profession expertise to comfortably and professionally engage clients’ about their intangible assets.

More specifically, while most firms’ tactical speed, i.e., the efficiencies of delivering its services, etc., remain important, continuing to be dismissive of strategic speed for developing new and proactively relevant client services that directly reflect globally universal changes in economics and competitive advantage drivers. So, law firm strategic planning should be designed and executed, as the adage goes, to ‘avoid continuing to skate where the puck is now, rather skate to where the puck will be’. Law firms strategically guided by assuring their practice areas are effectively aligned to address clients’ intangible assets are far better positioned to elevate their long term sustainability and bring greater consistency in revenue.

Too, a firms’ strategic plan can be further developed to incorporate internal and external client sensors which then can unambiguously constitute a ‘heads up’ to the normative. Of course, strategic planning initiatives must not be shy about challenging convention. One way is for the plan to be sufficiently malleable to absorb and effectively act on the full array of clients’ intangible assets and the various and nuanced forms they take.

Intangible assets are characterized in two primary forms…

  1. Legal intangibles, i.e., those which once issued by a government agency confer certain legal property rights which provide standing to defend in a court of law, e.g., issued patents, copyrights, and trademarks, etc., and
  2. Competitive(advantage) intangibles which are often characterized as being non-ownable, but they directly impact – contribute to a company’s financial well being, create efficiencies, increase productivity, and market value, etc. Often competitive advantage intangibles evolve collectively from various combinations of intellectual, structural, and relationship capital. (Adapted by Michael D. Moberly the work of Mary Adams_

A perspective on whether intangible assets are non-ownable…

Intangible assets are assumed to be non-ownable, but for the creator – developer of intangibles particularly those which measurably produce contributory value and competitive advantages, it is certainly in their interest to sustain control and use of the intellectual, structural, and relationship capital embedded in – underlie those assets and consistently monitor their value, materiality, and risk. If not, risks are all but sure to materialized, the effects of which rapidly erode, diminish asset value, sources of revenue, and competitive advantages. So, in companies and/or circumstances where such actions are taken to safeguard and preserve the content and value of intangibles would wisely convey a sense of ownership, as well it should!

Examples of intangible assets…

The following are examples of intangible assets. They have been adapted by Mr. Moberly from two respected comprehensive and current sources, i.e., (a.) ‘The Intangible Asset Handbook: Maximizing Value From Intangible Assets’. Weston Anson. 2007. American Bar Association, and (b.) ‘Untangling Intangibles’ Tamara Plakalo   February, 2006. Managing Information Strategies. Australia.

  • Technology – software: Internally developed (proprietary) software and software copyrights, automated databases, source code, enterprise solutions and custom applications…
  • Marketing: Lyrics, jingles (music), promotional characters and devices, photographs andvideo, newsletters, advertising/marketing concepts, results of focus groups…
  • Engineering: Industrial (new plant, equipment) designs, engineering drawings (blueprints) and technical knowhow
  • Customers – clients: Communication-mailing lists, relationships, customer data bases and retrievalsystems, special distribution channels, 1-800 numbers, relationships
  • Competitor research:  Actionable business intelligence, i.e., plans, intentions, capabilities…
  • Real estate:  Zoning – construction permits, air, water, and mineral drilling-exploitation rights, right-of-way, easements, and building (expansion) plans/rights, location visual scenery – proximity to
  • Personnel training:  Proprietary manuals, operations processes and/or procedure
  • Domain names, website design, B2B and e-commerce capabilities, web links, customer/client accessibility and use
  • Corporate identity:  Names, trademarks, logos
  • Products and services:Warranties, trade dress, i.e., product shapes, color schemes, and packaging design/graphics, open purchase orders, order and/or product back log,
  • Contracts – agreements:  Any contract that has a definable life and some form of exclusivity, e.g., supply, media, performance and pricing agreements, license and/or royalty agreements, advertising, construction, management, and/or service contracts, leases, operating and broadcast rights and licenses, route utilization, franchise agreements, subscription rights, futures contracts, co-branding agreements, endorsements, spokesperson contracts, venue naming rights…
  • Intellectual property: Patents, copyrights, trademarks, trade secrets, trade dress, trade name, service marks, mastheads, application, logo design, prior art search, flanker patents; patent applications, foreign patents, reprints, use/performance rights
  •  R&D: Product research studies, formulas, process and assembly data, regulatory agency approval process-status
  •  Communication:  Cable rights and/or transmission rights, FCC licenses and/or certification, bandwidth
  • HR:  Wage rates, union contracts, non-compete and non-disclosure agreements (if transferable)…
  • Structural capital:  The structures and processes employees develop and deploy to increase productivity and performance (business process/method patents)
  • Human capital:  Sum total of employees’ specialties, skills, attitudes, abilities, competencies, and technical ‘know how’ documentation, i.e., lab notebooks, manuals, formulas, processes, and recipes (food, chemical formulas)

Incorporating client intangibles assets in law firms’ strategic planning…

It’s fair to suggest that many law firm managing partners have various, but seldom specified responsibilities, aside from sustaining or expand the firms’ profile and brand, extinguishing the inevitable fires and ‘mending fences’. For some firms, managing partners’ responsibilities can also include garnering and fostering firm wide consensus to develop and execute a strategic plan, as advocated here, inclusive of intangible assets which is best commenced by advocating attorney operational familiarity with intangible assets, i.e., their stewardship, oversight, and management and the assets’ relevance to a firm’s specific practice areas. A law firms’ strategic plan, particularly one that incorporates client’s intangible assets, is a dynamic and on-going exercise. The reasons are that client’s intangible assets are often nuanced, business/company centric, seldom remain static, and frequently fluctuate relative to the materialization of risks, threats, and the nature and type of transactions engaged in which clients’ intangible assets will inevitably be in play.                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                 Int

Law Firm Strategic Marketing With Intangible Assets

June 12th, 2014. Published under Law Firms, Value Propositions. No Comments.

Michael D. Moberly     June 12, 2014     ‘A long form blog where attention span really matters’.

Thinking strategically leads to transformational changes in law firm planning… Frequently I hear thinking and planning strategically characterized as managerial luxuries which can only occur in isolation when law firm managing partners are not consumed with a daily barrage and demands of putting out fires and mending various fences. Further complicating a law firm’s best efforts to engage in genuine strategic thinking and planning is a reality that a significant percentage of firms manage – operate their practice through   quite conventional, hierarchical, and vertically siloed rule sets with substantial, if not total practice area autonomy. . Should the above be a reasonably accurate reflection of law firm management, which I’m quite comfortable in saying it is, it’s understandable why most law firms remain removed from, or worse, oblivious to the irreversibly intertwined and intangible asset dominated (global) business transaction environments in which clients’ intangible assets are routinely in play, at risk, and absent effective management. I do not believe it is a tremendous leap from the key implications found in the Stone v Ritter (911 A.2d 362 (Del. 2006), that law firm managing partners would have an obligation if not a fiduciary responsibility, not unlike their business clients, to ensure their firm achieves operational familiarity with intangible assets and incorporates same as a collaborative practice area geared toward the assets’ management, stewardship, and oversight on behalf of clients’.

Irreversible and global economic facts and business realities… So, what’s being advocated here is quite straight forward, that is, law firms that want to remain profitable and sustainable are obliged to engage in strategic planning that will pave the way for offering and delivering relevant services related to the management, stewardship, and oversight of clients’ intangible asset related services. This commences by firms’ managing partners and practice area attorneys recognizing…

  1. it is a global economic fact that 80+% of most company’s value, sources of revenue, and ‘building blocks’ for growth, profitability, and sustainability lie in – evolve directly from intangible assets which includes variations of intellectual, structural, and relationship capital, reputation, brand, and competitive advantages, etc.
  2. a company’s intangible assets are almost always in play and at risk in new initiatives, product/service launches, and other types of business transactions, etc.
  3. business client’s intangible assets are not a lesser or subordinate form of intellectual property, instead, IP is actually a subset or one category of intangible assets.

New strategic thinking and planning for law firms… Collectively, these irreversible global economic business realities warrant immediate strategic thinking and planning that allow law firms to reflect on and accommodate the range of expanded range of legal services that emanate from the permanency and dominance which intangible assets have become in today’s increasingly complex, yet intertwined business (transaction) environment. Importantly, intangible asset relevance is not limited to the legal profession, but also to the professional disciplines of accounting, valuation, security, risk management, and financial services, among others.

Misreading the global economic tea leaves… An unfortunate misreading of these economic and business tea leaves would be for any entity, law firm, or other, to assume this paradigm shift (from tangible – physical asset dominance to intangible – non-physical asset dominance) has yet to arrive. The fact is, it’s already here and for those who care to look, there has been an abundance of advance notice. For example, The Brookings Institution and Dr. Baruch Lev’s work on intangibles commencing in the mid to late 1980’s, along with comparable initiatives by the Athena Alliance headed by Dr. Kenan Jarboe, the Intangible Asset Finance Society headed by Dr. Nir Kossovsky and a host of other thought leaders like Jonathan Low and Mary Adams recognized early on the impact of intangible assets on businesses and global economies in general.   Importantly, intangibles have come to be the ‘building blocks’ for most all companies’ value, sources of revenue, growth, profitability, and sustainability! For me, it is the epitome of misreading the global economic, business transaction, and competitive advantage tea leaves for any multi-service (practice area) law firm to argue that intangible assets should not play an integral role in their strategic thinking and planning!. Respectfully, I recognize that many law firms remain steeped in generations of convention and past practice that inhibits an organization on many levels, from genuinely considering such an initiative because, among other reasons, at first blush, it may appear so operationally disruptive that it could be characterized as being akin to blasphemy to conventional and time honored practices of client service offerings, delivery, and management. . One thing is assured however, emanating from these economic facts is the reality that business clients, regardless of sector, will, with increasing frequency, seek legal services variously related to the stewardship, oversight, management, and commercialization and/or monetization of the array of nuanced intangible assets they produce internally or acquire externally. But, let there be no ambiguity, law firms’ whose strategic thinking and planning do not fully explore and preferably incorporate a new array of intangible asset related services to accommodate client needs and expectations, will likely experience falling revenues and client pushback. Admittedly, not all business clients have achieved sufficient operational familiarity regarding their management, stewardship, and monitoring of their intangible assets to articulate with clarity and specificity what legal services they need today and in the future. Thus, prudent law firms will endeavor to get our front of their go fast, go hard, go global clients and prepare relevant services so the firm can create its own competitive advantages by being ‘first on the block’ to have intangible asset services readily available to accommodate the inevitable client need.

A good first start is for law firms to assess some conventions… A good first start for firms to achieve the level of (intangible asset) understanding, strategic thinking, and planning advocated here, is by dismissing any notion that intangible assets are either singularly synonymous, interchangeable with, or short term subsidiaries to intellectual property (IP) or business goodwill. Law firms that elect not to strategically delve into the obvious relevance of intangible assets to each practice area can expect to experience not only revenue stagnation, but may likely, in a growing number of instances, find themselves having to significantly downsize or possibly face firm dissolution. True, firm dissolution may not occur today or tomorrow, but as additional global universality of intangible asset regulation and oversight comes to fruition, those law firms that continue to be dismissive of intangibles will be essentially conducting business strictly in the confines of convention, and not in the context of externalities. So my counsel to law firms and their managing partners is to engage in strategic planning that includes a strong and collaborative vision that encompasses a firms’ (a.) organizational structure in terms of how its various practice areas and expertise can be aligned to better address clients’ intangible asset (service) needs, and (b.) become more accommodating to the inevitable global universalities related to intangibles. In other words, attorney’s and their respective practice areas must be fully integrated to a lucrative solution by (a.) helping structure the firms’ future to meet its future, and (b.) start annunciating and exploiting a firm’s new competitive advantages created by offering intangible asset legal services.

Paths to elevating client relationships, satisfaction, and service delivery favorables… Frankly, in 2014, and for the foreseeable future, I would be hard pressed to devise a rationale why every law firm should not achieve an intimate operational familiarity with each of their clients’ intangible assets, and incorporate same in their strategic plan as tools to…

  • brand a law firm as being a leader in intangible asset stewardship, oversight, and management, which in turn will
  • enhance competitiveness by providing legitimate grounds to (a.)  re-engage existing clients, and (b.) engage new/prospective clients

Again, law firms that choose to be dismissive of strategic planning and do not adjust and create intangible asset relevant services should expect to experience stagnation in client relationship satisfaction and service favorables. So, it’s not a matter of when, rather it’s a matter of where and how law firms respectfully intervene on behalf of clients’ intangible assets. More specifically, while a firms’ tactical speed, i.e., the efficiencies of it service delivery, etc., remain important, being dismissive of strategic speed for developing services specific to intangibles, can confound a firms attorney’s, its practice areas, and certainly its clients. So, a law firms’ strategic plan should be designed and executed, as the adage goes, to ‘avoid continuing to skate where the puck is now, rather skate to where the puck will be’. Law firms strategically guided by aligning each service – practice area to clients’ intangible assets will most assuredly elevate their long term sustainability and revenue streams. So, it is prudent to recognize how we think, and what we think!

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. 1 Comment.

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!