ipCG Blog

Managing Ideas, Inventions, & IP.

Run - Don't Walk: First-Inventor-to-File is Here

Final implementation of the AIA has changed the race track substantially. Companies will have to adjust in order to win the new race to the patent office. ipCG’s cutting-edge ipAIASM services are designed to let our clients dramatically shorten the time between conceiving an invention and filing the patent application. A client company will run—not walk—to the patent office.

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POSTED BY Bruce Story and Chris Huffines AT 1:45 P.M. Mar 8, 2013

Part II: Rembrandts for Sale

In our October 15th blog post Don't Forget About the "Rembrandt in the Attic"?, we discussed how a failure to think strategically about IP may have been a overlooked factor in the financial collapse of Digital Domain Media Group (DDMG). DDMG as debtor in possession has now sought court approval to sell the 3D patents along with the company’s remaining assets. The assets will be auctioned in separate groups, with the six granted 3D patents and two applications sold as one group. For any parties considering making a bid for the 3D patents, one essential question must be asked: how much are these patents worth?

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POSTED BY Nancy Edwards Cronin and Nathan Doudera AT 9:10 A.M. Nov 19, 2012

The Role of Design Patents in an Overall IP Strategy

The recently concluded and highly publicized patent infringement trial between Apple and Samsung was significant because design patents have long been seen as less valuable and less strategic than utility patents. In reality, design patents do have strategic value, especially when used within the context of an overall IP strategy.

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POSTED BY Justin Kunz and Nathan Doudera AT 1:25 P.M. Oct 30, 2012

What is your IP and technology worth?

Over the past year, ipCapital Group has seen a dramatic increase in requests to value IP portfolios. The engagements range from advising on high-profile deals to supporting capital raises for small, private companies who have few assets other than IP. We continue to use these experiences and lessons as feedback to our methodology, which is critical as the landscape evolves. In our latest video, we highlight a few of those lessons.

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POSTED BY Adam Bulakowski AT 11:15 A.M. Oct 24, 2012

Don't Forget About the "Rembrandt in the Attic"?

The case of DDMG is not unique; IP mismanagement is pervasive throughout the media and entertainment industry. For a number of reasons, companies often fail to recognize the value of their intellectual assets, and the business continues to move forward while the IP strategy does not. When companies start to consider IP in the face of a crisis, be it bankruptcy or an infringement lawsuit, it is too late to go back and reap the benefit of their creative thinking and innovation.

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POSTED BY Nancy Edwards Cronin and Nathan Doudera AT 8:55 A.M. Oct 15, 2012

It's Football Season. Time to Go Long?

In February, Alcatel Lucent (ALU) initiated a corporate restructuring that included plans to license almost 9,000 U.S. patents. The license project was recently cancelled, because the assets have generated no cash over the past seven months. So, what's next? Maybe an auction? If the quality and strength of these patents matches or exceeds competitor portfolios, then maybe now is the right time to establish a long equity position.

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POSTED BY Betsy Nesbitt AT 3:24 P.M. September 25, 2012

Strategies for Filing Patents in China

For patents specifically, the best IP strategy for China balances the use of both Utility Model and Invention patents. For a comprehensive IP strategy, foreign companies should not just look at the term of protection and assume that Invention patents offer all the protection they need. Companies should use the full range of IP protections including not just patents but also trade secrets and know-how, black boxes, and defensive publications.

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POSTED BY Bruce Story and Nathan Doudera AT 2:28 P.M. Aug 29, 2012

The IP Protection Challenges of 3D Printing

3D printing is one emerging technology field with the potential to create significant—perhaps even extreme—practical and legal consequences.  Innovators and manufacturers need to be ready to use all the protections offered by the different forms of intellectual property to protect their assets and businesses.

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POSTED BY Chris Huffines AT 5:05 P.M. Aug 15, 2012

Reboot Your Innovation Strategy

Is your business strategy aligned with the current market? Or, are you exhausting resources on innovations for a bygone market opportunity? Reboot your innovation strategy with a broader perspective.

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POSTED BY Adam Bulakowski AT 5:45 P.M. Jul 25, 2012

Is the Rental Car Industry Heading Toward Disruption Because of Intellectual Property?

The rise in the prevalence of technology and patent filings in the car rental industry is creating the possibility of an industry disruption due to intellectual property. Car rental companies that acknowledge and prepare for the increasing importance of IP will stand to benefit, while companies that ignore the importance of IP will suffer.

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POSTED BY John Cronin and Nathan Doudera AT 1:20 P.M. Jul 25, 2012

Getting Started with the UK Patent Box Initiative: Establishing Your Baseline

As the commencement date of the UK Patent Box initiative approaches (April 2013), eligible businesses need to begin thinking about what their current baseline looks like in regards to their existing IP portfolio. By establishing an initial patent to product mapping inventory and setting up a formal process for ongoing management, businesses can maximize the near and long term benefits of the Patent Box initiative.

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POSTED BY Ben Taylor and Cody Barrette AT 4:30 P.M. Jul 18, 2012

Overcoming Barriers to Innovation and IP Creation - PART 5: FINDING BUDGET

This final article in a series of five on barriers to innovation and IP creation explores ideas for overcoming having no resources or budget. Learn how an effective “ROI story,” communicated to executives, can help you obtain dedicated budget to invest in staff, infrastructure, and tools needed to drive your innovation and IP initiatives.

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POSTED BY Jed Cahill AT 8:02 A.M. Jun 19, 2012

UK Businesses - Are You Prepared for the Patent Box Initiative?

The Patent Box initiative is an exciting offering for businesses operating in the UK; one that can provide significant long term technical, business, and financial value. By considering the implications of the Patent Box program now, businesses will be able to put in place the necessary processes to measure, communicate, and build a sustainable IP program supportive of this initiative.

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POSTED BY Ben Taylor AT 3:58 P.M. June 18, 2012

IP's Impact on Investor ROI

As a follow-up to the recent M&A post, this article examines common IP-related drivers of ROI, from the perspective of an investor, such as a private equity firm.

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POSTED BY Adam Bulakowski AT 8:04 A.M. Jun 13, 2012

IP’s Role in Improving M&A Success

Inorganic growth strategies through M&A don’t always account for the potential of intangible assets. M&A teams that consider IP and other intangible assets both before and after a deal can improve success with more accurate pricing and more efficient value extraction.

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POSTED BY Adam Bulakowski AT 8:35 A.M. Jun 7, 2012

IP Valuations: When an IP Decision Includes a Real Option

Making the decision to invest in patented technology requires a manager to map and evaluate a series of decisions and uncertainties. Real options pricing can enhance IP valuations in situations where key assumptions regarding market, financial, and technology variables are identified and estimated with reasonable accuracy. When coupled with the income and other valuation approaches, such as comparable market transactions, options thinking can guide financial and strategic decision making.

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POSTED BY Adam Bulakowski and Betsy Nesbitt AT 8:09 A.M. May 25, 2012

Overcoming Barriers to Innovation and IP Creation - PART 4: MOTIVATING ACTION

Having a dedicated innovation or IP leader responsible for managing execution according to a documented process is essential for putting strategy into action. But even a well-defined strategy and process and won’t run itself. People make the strategy go. So, how can you help your organization motivate action by the teams and individuals needed to achieve your innovation and IP goals? How can you incentivize value creation?

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POSTED BY Jed Cahill AT 8:03 A.M. Apr 23, 2012

Do Investors Understand the Value of your Patents?

Last week, Microsoft paid $1.06B to purchase and license about 1,100 AOL patents. Putting the issues of purchase premium and strategy aside for another discussion, this transaction presents an interesting case on IP value expectations and communications.

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POSTED BY Adam Bulakowski AT 8:20 A.M. Apr 17, 2012

How To Find Great Ideas and Get Them Funded

Great innovation is not just about great ideas. To get new ideas off the ground, you need executive buy-in and funding. You can increase the likelihood of success by building the executive buy-in for the innovation process, and by knowing what the CEO and other stakeholders are seeking in order to approve and fund your ideas. Here's how you can find great new ideas and establish rigor in the process that will win support and funding.

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POSTED BY Kate Shore AT 8:17 A.M. Mar 19, 2012

IP Valuation Case Study: Non-Durable Consumer Products & IP Acquisitions

Companies buy and sell intellectual property (IP), including patented technology, in all industries, ranging from high-tech products like semiconductors to relatively lower-tech products like non-durable consumer goods. Businesses can take advantage of these often fast-moving opportunities if they have the appropriate IP valuation tools. These tools are particularly important when market and technology uncertainties are highand managers need to model different market scenarios.

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Copyright is a Cautionary Tale for Patent Holders

SOPA, PIPA, RIAA, MPAA. In certain corners of the Internet, these are not just 4-letter acronyms, but 4-letter words. What is most striking about the conflict over digital piracy is the incredible level of hostility the copyright holders and their defenders, including the Recording Industry Association of America and Motion Picture Association of America, have generated. Patent holders and their defenders should take note: you are next.

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How Can Innovation Improve Customer Service?

Serco, a FTSE-100 outsourcing company based in the UK, operates contact centers for a large, FTSE 100 broadband provider, who was seeking to raise the level of performance for customer service. ipCG's innovation process was used to discover and prioritize 300 innovation ideas toward this objective. Just three months after the process began, Serco's performance on handling customer complaints moved to the top of the client's supplier performance table.

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Overcoming Barriers to Innovation and IP Creation - PART 3: DEFINING YOUR PROCESS

Strategy is only as valuable as your ability to execute - an imperfect strategy that is well executed will generate much higher returns than a glossy white paper strategy that is poorly executed. So, how can you help your organization turn innovation and IP strategy into business value? This third article in a series of five on this subject explores ideas for overcoming the barrier of having no defined process.

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Top 5 Blog Articles from 2011

Looking back on 2011, we've pulled together the top five most read articles from the ipCG blog during the year. While we covered many topics, including a series on IP strategy execution, open innovation, and the impact of new patent legislations, the topics of most interest to readers were IAM best practices for SMEs, understanding patent valuation, and filing strategies for design patents and China.

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Overcoming Barriers to Innovation and IP Creation - PART 2: DEFINING & MEASURING SUCCESS

Establishing a clear direction for innovation and IP creation starts with consensus on an overall corporate strategy that defines the vision, specific business goals, and tactical actions that serve the vision and goals. Unfortunately, Executive and Board level consensus on the strategy is not enough.

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IP Valuation Case Study: IT Industry

Over the past two years, ipCG completed several IP valuations in the IT industry. In most cases, our clients contracted the models for external purposes - to estimate IP value for M&A negotiations. However, work products generated significant internal benefits as well. We share this case study with you to demonstrate the many strategic and managerial insights that can be gleaned from thoughtful IP valuations.

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New Year, New Strategy

No new typewriters will be produced in 2012. The last production line closed down just this past year. On the one hand, this shows quite poignantly why innovation is important, on the other hand, it shows that destructive innovation is not something that happens in a flash. So, how do you know if your product is a typewriter? Do you have a plan?

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IP Valuation: Is the "25% Rule" Still Relevant?

The 25% rule is a rule of thumb used to estimate royalty rates for intellectual property (IP) licensing transactions by approximating the risk/reward relationship between a licensee and licensor. A licensee only pays a portion of profits to the licensor, because of the additional costs and uncertainties that it incurs to convert the technology in to revenue.

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ipCG Welcomes Betsy Nesbitt

ipCapital Group is excited to announce the addition of Elizabeth (Betsy) Nesbitt to our team. Betsy works primarily on ipCG valuation engagements, where she conducts market research and builds financial models to assess the value of patents and other forms of intellectual property.

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Top Ten Things that SMEs Need to Know About IP

SMEs are often in a risky position of not having access to professional advice or formal training about intellectual property (IP), and therefore can unknowingly handicap themselves in whether or how they use IP. As a starting point, here are the 10 things every SME should know about IP.

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Overcoming Barriers to Innovation and IP Creation - PART 1: ESTABLISHING DIRECTION

The innovation and IP leader who is able to overcome the barriers has an opportunity to advance the company's competitive position with better products and services, faster time to market, more efficient operations, stronger IP, and the resilience necessary to respond to rapidly changing market conditions and critical business problems.

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AIA's Effect on NPE Assertion Tactics

The Leahy-Smith America Invents Act (AIA) recently signed into law by president Obama represents the most substantial modification to the U.S. patent system in the past fifty years, and most notably, changes the U.S. system from a "first to invent" to a "first to file" system. These new rules will undoubtedly cause companies to re-think their intellectual property (IP) strategy and re-tool their IP process.

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ipCapital Group Welcomes Chris Huffines

ipCapital Group is pleased to announce the addition of Chris Huffines to our team. Chris works primarily with ipCG strategic partners on projects such as technical patent mapping and prior art analysis. He is especially active in the areas of telecom analysis and in reviewing the changes to the patent system stemming from the America Invents Act.

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Linking IP Strategy and Profitability

Business strategy boils down to choices, with the ultimate goal of maximizing firm profits. The firm plans its activities, e.g. operations, marketing, finance, R&D, to support its business strategy. However, few firms use IP strategically by aligning IP activities with their business goals.

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Linking IP to Competitive Advantage

In formulating its business strategy, a firm analyzes both its external environment and its internal composition. Externally, the firm studies the structure of the industry in which it competes, identifies market opportunities and threats, and researches social, political, technical, and economic trends.

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Hollywood and Hidden Creativity

Whether used simply for enhancement of brand, developed and sold as a new product, or licensed to film industry companies or studios, Hollywood inventions are being missed. These missed inventions are wasted opportunities for studios and companies involved to increase their revenue based on creative thinking - ironically, the lifeblood of the film industry.

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How to Encourage Joint Creation in Open Innovation without Losing IP Rights

In the September issue of Intellectual Property Magazine, Kate Shore discusses how to address IP issues before the relationship to help create a culture of co-invention and collaboration, how to rev up your innovation engine to generate many potential inventions, and ways to maximize the value of the inventions created for both parties.

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Missing Trade Secrets?

If you are like most technology managers, you know you have trade secrets in the organization, but you don't know what they are. You know you have to protect "them" from loss, but what are "they"?

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Missing Inventions?

If your R&D department is like most, you have very creative people working diligently to solve problems. However, you may wonder why you don't see more invention disclosures coming from such bright, creative people.

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How to Adjust a Target's Valuation for Risk

Risk factoring is critical to developing valuation models that work. By investing the time needed to develop thorough and effective risk adjusted valuation models, you significantly increase the potential that you will actually achieve the projected return on investment for your technology acquisition and make better, more informed business decisions.

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Know What to Pay: Evaluate the Market Value of an Acquisition through Comparables

Comparables are vital to determining what the market would likely pay for a company, technology, or Intellectual Property (IP) asset. While the market value is not necessarily what the asset is worth to your company, it gives you an idea of what competitors may be willing to pay and can provide insight that will inform your bidding strategy.

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A Triangulation Approach to Valuation Delivers the "Right" Price

A Triangulation Approach to valuation looks at value in three ways: 1) modeling the value that the technology and IP provides for your company's intended use; 2) reviewing, risk-adjusting and use-adjusting the target's valuation, and 3) understanding market comparables.

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Sustaining the IP Strategy Execution Process

As has been shown, ICM processes are needed to successfully execute the IP strategy. If a company does not have all the processes needed, or needs to improve their processes they typically call upon outside experts in the field to help. This can be very helpful by comparing with best practices in the industry.

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Measuring and Extracting IP Value

The value of any IP is dependent on the context. Valuation of the IP in context and targeted marketing is important to gain returns on the licensing effort.

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Protecting IP

The protecting phase includes the legal processes for creating a patent application, filing in the appropriate jurisdiction and prosecuting the application through to the grant of the patent.

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Reviewing IP Strategy

Organizations that do not use the IP strategy reviewing process generally file patent applications on everything that is deemed patentable coming from the R&D staff. There is no one "minding the store" to ensure that the IP strategy is followed. This is a very expensive way to create a low-value patent portfolio!

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Documenting

Documenting is an important step on the path to successful execution of IP strategy, however inventors are often more interested in solving technical problems and inventing than in documenting their inventions.

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Creating and Acquiring IP

Facilitating invention, acquiring technology and IP from outside the company, and inventing around patents are key processes for creating and acquiring IP. Many companies have adopted the best practices of conducting proactive invention extraction sessions and directed invention brainstorming.

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Planning & Motivating IP Strategy

All the Intellectual Capital Management (ICM) processes focus on implementing IP strategy. The strategy must clearly articulate what the desired business objective is and how IP supports that.

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IP Strategy Execution and Process Implementation

The first step in implementing IP strategy is to thoroughly evaluate which processes you have that are working well and which processes are absent or are not yielding the desired results. It is important for a company to consider the best practices used by other IP leaders, both inside the company's industry as well as in other industries.

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Value of a "Business-Driven" IP Strategy

To achieve value effectively, IP-savvy companies have learned to create business-aligned IP strategies. The IP strategy must be integral to the business strategy to create maximum value.

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Instant Intellectual Property Violations

Protecting Your IP in the Age of Home Manufacturing

Imagine this scenario: You spend the tens of thousands of dollars to bring a product to market, and patent-protect it. Within days of your product's release, the device has been scanned (via a 3D printer add-on that cost only $200), its dimensions transformed into computer code, and that code transmitted across the globe via the internet. Thousands of people with 3D printers can then take this pirated information and create exact copies of your device in their homes.

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Business Interests are Finally a Focus at the USPTO!

The newly published USPTO 2010-2015 Strategic Plan is the first strategic document from the USPTO that demonstrates that someone who has used IP as a global business asset is in charge! No wonder, as the new Director of the USPTO, David Kappos, comes with 20 years of experience managing IP at IBM.

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Recent Uproar around False Patent Marking

False patent marking has become a hot topic recently as case law around patent marking on products and recent legal developments have created a lucrative opportunity with very low barriers to entry. More than 100 cases have been filed so far in 2010 and new cases are being filed daily. ipCG has some suggestions on how your company might respond.

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The Strategic Use of Design Patents

Design patents are a form of IP that should be considered by all industries as their strategic use, in conjunction with utility patents and other forms of IP, can strengthen and enhance the value of a company's IP portfolio and brand.

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Degrees of Patent Analysis: Which Approach to Use and When?

Good preparation for a patent search can lead to successful and effective patent analysis, whereas the lack of preparation can lead to the disappointed stakeholders, missed IP opportunities, or wasted time.

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Measuring, Managing, and Communicating Intangible Asset Value

Intellectual property (IP), such as a patent portfolio, is a critical intangible asset for innovative companies. However, IP presents management and communication challenges because few companies catalog their IP strategically or link its development to value creation, i.e. increased revenues or decreased costs.

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Cost-Effective IP Strategy Investment

Whether a company uses its IP offensively or defensively, a company's investment in IP strategy can be implemented cost-effectively in both the short and long term. Four practices to consider are: an IP portfolio audit, strategic foreign filings, defensive publications, and strategic portfolio development.

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Leading Companies are Integrating Product Development, IAM, and IP Processes

"It is only a matter of time before the integration of IP and product development becomes part of the mainstream business process. Companies have to decide whether they want to be leaders or laggards as this happens." John Cronin, Managing Director & Chairman of ipCG, and Brad Goldense President and CEO of Goldense Group, Inc. are the authors of "Integral IAM and new product processes are the future," published in the November/December 2009 issue of IAM Magazine. Their article stresses the importance of becoming an early adopter to the growing trend of merging intellectual property and business goals.

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ipCapital Group speaking at the Licensing Executive Society

If you are attending, be sure and stop by one of the workshops in which ipCG is partnering to speak at LES with other companies.

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ipCapital Group Releases iPhone^TM Application; Ah-Ha!^TM Discovery Deck

ipCG is pleased to announce the release of its first iPhone^TM application, the Ah Ha!^TM Discovery Deck, which is an electronic version of a brainstorming and creativity tool that ipCG has been using for years with clients.

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Mobile Device Applications and IP

If you expect mobile applications will become an established channel of communication for your business, you should consider implementing a formal strategy to guide the development process, from generation ideas to prototype creation to selection of best mode of IP protection.

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Intellectual Asset Management Best Practices for Small Companies

Small companies can face large financial hurdles on the way to securing intellectual property (IP) protection, particularly with patents. Accumulated patent lifecycle costs can exceed $125,000 for one US & one PCT filing. This cost may include prior art searching, patent drafting, patent prosecution, and maintenance fees.

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Is it worth $20M or $200M? A case study on (un)realistic IP licensing value expectations

IP valuation is complicated by a host of factors, such as accessing market comparables, determining IP risk, handicapping potential licensees, and calculating the uncertain economic benefits to be generated by IP assets. While many sources enumerate methods of IP valuation, few provide real-life applications or guidelines.

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Weathering the Economic Storm in Telecom with Strategic Management of Intellectual Property

Telecom companies large and small will reduce costs by out-sourcing more processes, reducing headcount, and generally reaffirming focus on core markets and technologies. The cost-cutting conversation for many will eventually turn to intellectual property (IP), and rightly so. There is opportunity for many thousands or millions of dollars in value creation by reducing costs and increasing revenue through strategic management of IP.

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IP Training

The development and management of IP is an art, not a science. Of all corporate job functions, only IP attorneys receive formal training related to IP, but just related to the legal side of intellectual property. More comprehensive training is needed...

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The Disruptions are Coming!

All companies are susceptible to disruption - across all industries, at every scale, and in both strong and weak players. IP plays a key role in disruption - it is both a means for identifying it and protection against it. Make sure that you are ready when disruption comes galloping your way!

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Consumer Products

Innovation is the lifeblood of consumer products companies, as they strive to stay ahead of competitors, respond to evolving customer needs, and manage other market pressures. Products typically have short timelines for development, design, and marketing and high corporate expectations for sales. Getting products to the market is just the first step in a long process.

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Grow Patent Quality with Reverse Engineering in Mind

Any company that files patents as part of its intellectual property (IP) strategy should be actively thinking about the end use of these assets. In order to maximize business leverage, a patent holder must be able to demonstrate that a third party is using or may have a desire to use the patented invention.

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Minimize Loss of Intellectual Assets When Downsizing

Is your company planning to layoff employees in response to a tougher economic environment? Do you have a process for preventing valuable intellectual assets from walking out the door along with your exiting employees?

(Full ipCG Blog Article)

IP Valuation

A valuation of a company's patent portfolio or of a specific group of patents is important in helping the company to determine the value of its portfolio in a licensing transaction or in the sale of the company. It is important for companies to understand the drivers of value within their portfolios and to understand the strengths and weaknesses of the portfolios.

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ipCG Benchmarking Survey

Companies engage in strategic planning to lay out a path to success in various areas of business. In strategic planning, achievement of milestones and progress toward goals are assessed using a variety of metrics, both quantitative and qualitative. A refined set of those metrics may be designated for use as key performance indicators (KPIs).

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Should I File Patents in China?

There is a lot in the news about IP piracy and counterfeiting in China. This may cause you to be indecisive about whether or not it is important to file patents there. It is also very clear from the numerous analytics work we have done in almost every industry that only a handful of companies have a clear filing strategy. Many of our clients ask us what they should do.

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Innovation Protection Through IP Strategy

In a recent article, "Is the recession suffocating American Innovation?," Deb Riechmann of the Associated Press describes some trends that may be negatively impacting the success of innovation in the US. There has been a decline in the new patent applications at the US Patent and Trademark Office because some companies...

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Telecommunications

The telecommunications industry continues to evolve. Competitive threats come from the least likely sources. Technology continues to create new business models and disrupt the old. Network convergence may shift the balance of power.

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Innovation and IP Strategy: Even More Important Now

In Vijay Govindarajan's blog, "Strategy and Innovation," his April 12th entry responds to a recent BusinessWeek article, "Is Innovation Too Costly in Hard Times?" From the article, IBM Chief Executive Samuel Palmisano, states, "Some may be tempted to hunker down, to scale back their investment in innovation. While that might make sense during a cyclical downturn, it's a mistake when you're going through a major shift in the global economy."

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IP and the Banking Industry

In 1997, a small Texas company called DataTreasury invented and patented a novel technology to electronically capture and store checks. More than 10 years later, after post-September 11th laws were instituted requiring banks to be less reliant on paper checks being transported by aircraft, DataTreasury found that its patent was being used by a long list of major American banks.

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IP Cost Management

As the economic downturn forces companies to tighten their collective belts, one strategy they cannot afford to abandon is strategic management of intellectual property (IP) through patents - one of the most powerful methods of protecting competitive advantages.

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Brand and IP

In today's competitive marketplace, companies cannot miss any opportunity to strengthen, improve, and protect their brands. They have to look beyond traditional strategies of securing trademarks, copyrighting text, and protecting designs.

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