Michael D. Moberly August 28, 2012
The difference between a patent and intangible assets is that an issued patent can be framed, while intangible assets are non-physical and are the real enablers of most every patent. Frequently, much to the chagrin of intangible asset strategists, intellectual property, i.e., patents particularly, are the presumptive ‘brass ring’ which a significant percentage of technology transfer managers, researchers, inventors, and legal counsel set their sights, sometimes for obvious reasons, and sometimes because quite simply, there is no intangible asset specialist -strategist in place to articulate alternatives.
I suspect, somewhat respectfully, that deference is routinely attached to patent (only) strategies based on the time honored perspective that an issued patent conveys ownership, certain rights, and is defensible under law, all of which it does. However, the costs associated with obtaining, maintaining, and defending a patent are escalating, making that tract increasingly out-of-reach for many inventors and innovation regimes, absent a fairly deep pocket of investment resources.
In today’s increasingly aggressive, predatorial, and winner-take-all global business transaction and R&D environment, patents, in my view, are in a fairly constant state of risk. Too, I might add, 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 does not.
Yes, it still remains very true that prospective investors, venture capitalists, and to be sure, large multi-nationals who may express interest in an inventor’s research, truly believe the proverbial ‘what is your IP position’ question is both relevant and important. At the 30,000 foot level, the answers to IP questions like that, can become deal breakers or constitute a significant duty of sorts levied against the inventor. But, in a large percentage of circumstances, and I say this with the utmost respect, there are comparatively few researchers – inventors working at the 30,000 foot level, rather most are working at the 4,000 foot level, with the ‘gatorade invention and royalties’ (University of Florida, 1965) few and far between.
Patents are expensive to obtain, to maintain, and to defend. And, even if the entire patenting process goes smoothly for an inventor, company, or institution, the patent still remains at risk and the inventor along with any number of individuals associated with the research and/or patenting process could stumble. That is, the research product could become entangled-ensnared in various legal disputes and challenges, fail to be effectively marketed, and/or resources being withdrawn to maintain the patent.
In far too many instances, I find the intangible asset offspring (enablers) of IP are being overlooked, dismissed, or overshadowed by the assumption that the time honored practice – strategy of pursuing conventional intellectual property, i.e., patent applications, provisionals, licensing, etc., are perceived as either the best or only option. Of course, I disagree.
To that point, an analogy may be in order. When one seeks the guidance of SEO (search engine optimization) firms to promote their website and/or blog, the business development – marketing officers’ lead statement will consistently be some variation of ‘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 the all-important conversions that many assume will come naturally. Yes, entrepreneurs can rationalize that all it takes is one good (the right) ‘conversion’ to kick start a company down the path to riches. But, reaching ‘page one of Google’ may not be all that a startup company really needs to achieve sustainable financial success. Instead, they are likely to be in need of a well-coordinated, focused, and specific strategy that effectively utilizes an array of internet resources and social media that presents many different options for exposure and conversion, not merely one!
So, for 2012 and beyond, inventors, researchers, companies, and institutions who engage in R&D, perhaps their initial call should not be to legal counsel, rather to an intangible asset specialists-strategist who can identify, unravel, and assess the enabling intangible assets and offer a variety of options and strategies that ‘fit best and work best’!