Maximizing IP Value in an Economic Downturn

I had the opportunity to attend a seminar on Maximizing IP Value in an economic downturn this morning, courtesy of Fish & Richardson.  I’ll touch on the highlights.  James Babineau spoke about streamlining patent filing and prosecution through electronic filing, provisionals, PCT as first filing, etc.  Most importantly, he cautioned to stop at every step and think about the value of the patent.  He also recommended that a company shirk obsolete or unused patents.  Finally, he talked about licensing you way into new markets or fields rather than trying to patent your way in. Edward Cavazos capitalized on that last point with a series of charts intended to stress the monetization of the technology.  Broken down, having a bunch of patents in your trophy case doesn’t really buy you anything unless you can leverage them for profit.  Mr. Cavazos turned to common pitfalls of a downturn economy such as outsourcing, under-thought agreements, and joint ownership. 

David Healey spoke next about specific litigation issues.  He contrasted the old way of doing business with what he believed to be the latest trend, especially after Ebay.  Specifically, he considered the merits of reexams, sharing counsel, better targeting patents, filing for global patents up front, and marrying prosecution and litigation at the start of the process.  The final speaker was Garland Stephens.  He concentrated on the issue of the cost benefits of case management.  Essentially, this was a lesson in war as a means of politics.  His message paralleled a conversation I had with Norma Bennett at breakfast.  Do the recon on your opponent but treat him/her/it with respect.  It’s ok to file for declaratory judgment to lock in your jurisdiction, but then open negotiations to try to avoid the conflict.  

It was an excellent seminar and I thank Fish & Richardson for the invitation.