IP Strategy is Increasing Focus at Innovative Companies: Here’s Why

By Jackie Hutter

After more than 8 years, I can report that IP Strategy is an increasing focus at innovative companies, and there is a solid reason why this is so. By way of background, for many years, I have been part of a small minority of IP experts who advocate that companies desiring to maximize the value of their IP investments re-think the way they seek and obtain patents. In short, I and my IP Strategist peers urge companies to wrest control of their “IP destiny” from their legal service providers who have traditionally been seen as the primary drivers of the patenting process for their clients. Of course, readers of my regular ruminations know that my strongly held view is that “the only person who needs a patent is a patent attorney,” and that, even for those companies for which patents are critically necessary, very few actually obtain patent protection that meaningfully protects their innovations. But, my view has remained muted by the vast marketing resources wielded by traditional IP law firms. Indeed, a fellow IP Strategist friend of mine at a large consumer hardware company calls these folks “the legal industrial complex.” This means that the “you need a patent” message remains the predominant framework for most potential patentees today today.

Fortunately, for those like me who believe that the traditional IP legal service model is broken and is ripe for disruption, there appears to be change emerging on the horizon. In my own IP Strategy consulting practice and in conversations with my IP Strategist peers, I have increasingly seen and heard of situations where innovative companies are seeking a second opinion over that of their primary patent counsel and, in some situations, are even seeking a first opinion from experts like me before they move forward with their IP procurement efforts.

This is great news for me because my practice is increasingly busy. However, at a deeper level, I know this enhanced focus on IP Strategy, either along with or in lieu of traditional IP legal service models, also reflects a broader transformation of the views of those who guide decision-making at innovative organizations. In short, I see the coming generation of business leadership to be less deferential to “expert” opinions of IP lawyers than that of previous generations. Additionally, they are more willing to generate a working knowledge of critical business areas like IP that can potentially make or break their business over the long term. That is, they are gaining the knowledge required to “call BS” on their IP lawyers.

Certainly, my observations track a greater societal shift that aligns with broader demographics profiled by others: those born after the “Baby Boomer” generation are more hands-on and engaged, as well as being better able to verify informationvia online resources. While the “Generation X” cohort has been in the workforce for many years, we are now starting to see this group come into significant leadership positions in corporations where they are now increasingly able to exercise what I call the “trust but verify” approach to IP procurement (as well as other types of legal services). This emerging generation of corporate leadership is less respectful to so-called “experts,” and also is more interested in confirming for themselves that the information being given to them is valid for their specific business needs.

To this end, it seems like few of my IP Strategy clients today are over the age of 50, and among those who are this age or older, it is somewhat rare that the relationship is fruitful. By “fruitful,” I mean that both I and the client are satisfied with the end result of the IP Strategy engagement. Put another way, it often seems that my older IP Strategy clients still seek to outsource primarily all of the IP development efforts to me. While I still get paid for these engagements, I find them generally unsatisfying because I know that without the substantive participation of the client business team, my work is unlikely to result in generating meaningful patent protection that will service to maximize the company’s business value. Typically, after an initial engagement is completed with these clients, I end up passing these clients onto more traditional IP lawyers to carry on with additional IP efforts.

On the other hand, my clients who are below about 50 years old—a client group that increasingly includes “Millennials” who are running startup companies at very young ages—seemingly have no issues with engaging two IP advisers when patent protection is understood as being critical to their maximizing long-term business value. Other clients choose to come directly to me even prior to seeking guidance from a lawyer at a traditional law firm. These clients are certain that by putting strategic determinations at the forefront of any IP procurement efforts will enhance their ability to create meaningful patent protection. Only when a business appropriate IP Strategy is created will we together engage a traditional IP attorney whose role is to execute that strategy.

For each of these clients, a key differentiator from traditional IP legal service practice models is the desire of the client’s business team to work closely with me to help them identify, protect, and leverage the value that their company’s innovation efforts are creating in the marketplace. Like with hiring a personal trainer when you want to get in shape, hiring an IP Strategist is only the first step toward creating and maximizing IP value–you have to do the work to see the results. Your personal trainer can’t show up at the gym for you, nor can she lift your weights. Similarly, the client’s business team must be willing to roll up their sleeves and provide me with the market and competitive information necessary to create meaningful patent protection. Of course, the technical team is necessarily involved with these IP development efforts, as they must be. However, my most productive client engagements occur when my clients’ business teams are my first point of contact, and when they remain engaged during the entire IP Strategy development process.

This is a stark difference from my client engagements when I was a partner in a prestigious IP boutique earlier in my career. In these traditional client engagements, my point of contact was almost always the technical leads of the relevant business teams. Indeed, I could count on one hand the number of business people I interfaced with as outside patent counsel, even while I was often ostensibly responsible for creating foundational patent protection for innovations upon which $ 10’s of millions—or even $500 million in one case—of future corporate value rested. Deference to patent experts, as well as the perception that patents were arcane and unintelligible to any besides the technical staff and the lawyers, dictated that little interaction existed between IP procurement efforts and the business aspects of companies in the past.

The point of this post is to share this observation of a generational shift in IP Strategy focus with my readers, since I likely possess a heightened visibility to this emerging generational transition. I do not think that IP lawyers in traditional practices need be overly worried about being able to retain and grow their client portfolios in the face of a growing interest in IP Strategy. Nonetheless, IP lawyers with traditional practices should not be surprised when their clients start bringing advice from other IP experts to them, especially when much may be riding on the underlying patent efforts. In short, IP Strategy is here to stay.

[This post originally appeared at IP Asset Maximizer Blog.]

Comments

  1. Michele Ballagh says:

    While I agree that some legal professionals in the IP world do sometimes mislead their clients as to the merits of obtaining a patent for a particular invention just to increase their own billings, I think clients often have a fundamental misunderstanding of the role of lawyer/agent in securing IP protection.

    IP professionals are not business experts and should not be expected to become business experts. The legal aspects of IP are complicated enough as it is and are only getting more complicated. Lawyers/agents are often not involved in developing the client’s business model or even in identifying potentially patentable subject matter or other material capable of IP protection and they probably don’t need to be so involved. On the other hand, many lawyers/agents make considerable effort to educate their clients about IP issues (and not just for marketing purposes) and most lament the lack of knowledge/education in the business and marketing departments of universities and colleges on IP issues. That is starting to change as IP becomes a bigger and bigger driver of the economy, but it has been surprisingly slow to develop.

    In larger companies with their own business/IP/legal experts on staff, they probably can and should rely on their own internal resources to identify potentially patentable subject matter and other IP that may be available to protect a business objective and on which to seek advice from an agent/lawyer. Presumably, the technical people in such companies who are providing info and instruction to agents/lawyers filing patent applications are doing so with the approval of the internal business experts. If they are not, this is a business problem that should not be blamed on the agent/lawyers who have not been asked to provide advice on the business merits of the invention and have no expertise to do so.

    Start-ups and SME’s without a large staff may find advice from business consultants with expertise in IP (like yourself) on such issues to be helpful and should definitely use such consultants to be more proactive in managing their IP professionals to ensure that they get meaningful protection that achieves business objectives. Nevertheless, where such advice is not sought by a SME, it is still not the lawyer/agent’s role to question the business merits of seeking protection for a particular invention or other IP and they should not be blamed when a business makes bad business choices in pursuing IP protection of little or no value to the business.

    Frankly, I think there needs to be more understanding and respect for the role to be played by the lawyer/agent in securing IP protection. It is not fair to criticize lawyers/agents for the sometimes bad business decisions of those clients who fail to educate themselves on IP issues or to develop good business practices for managing their IP.

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