Inclusion into the IAM Strategy 300 list for 2016

IAM Strategy 300 2016 Truly a “Standing on the shoulders of giants” moment – for the 3rd year in a row I have been listed in the 2016 edition of the IAM Strategy 300, which was published  last month.

I am particularly thankful to my peers for nominating me for inclusion in this years list.   When I started investing in my IP education 17 years ago, seemingly “before it was cool”, I did it because I was passionate about the topic, getting insight from every piece of literature I could.  As a result of my efforts, I’m now humbled to be listed along side world class IP lawyers and consultants, as well as IP heads from companies like Google, Amazon, Ford Motors, Nike, and Apple.  I’ve come far, but still have a long way to go!

My congratulations to all those that are on the list in 2016.

About the IAM Strategists 300: Over the course of several months, IAM researchers spoke to a wide range of leading IP professionals in order to identify people considered to be world-class IP strategists: men and women whose business is the creation, development and deployment of strategies that enable IP rights owners to gain maximum value from their portfolios. Only those individuals considered and nominated by their peers to be outstanding IP strategists are listed in the IAM Strategy 300. The IAM Strategy 300 is available in printed format and online at

A brief pause on IP Insights …

My apologies – all my writing drafts are with publishers!  Two articles and a book chapter somehow were written in the past few months, so will be back to  posted IP insights shortly.

If you have IAM Magazine access you can view my latest published IP strategy based article: How an innovation and IP value-chain view can transform portfolio value “While an IP portfolio built on business value chain can have strategic value, companies should take a closer look at how strong links between intellectual property and innovation can expand a portfolio’s breadth and depth”


Top 5 IP challenges all executives will face in 2016 (Part 1)

What are the key business oriented challenges that any manager or executive should be considering in 2016?

Based on current patent and market trends, below are the top 5 challenges all executives or company leaders will face – these challenges directly impact R&D departments, legal groups, innovation teams, and even finance departments.

Challenge #1 – Thinking Globally

It has been no surprise that as the US legal environment has shifted and as a result the IP investors have moved to find more stable environments – namely Europe. Yet while Germany seems to be the focus there still is discussion about increasing patent quality for licensable IP, and the bigger geographic picture still needs considered. Moves in IP growth across Asia Pacific (South Korea, China, and Japan) are happening in the background, perhaps a preview of where global enforcement will be in the next few years (Although Edward Jung notes it may already be there). To layer on top of this – while historically US assets were once purchased, now the IP marketplace is looking for more a global portfolio to purchase as a necessity.

Challenge #2 – Innovation is back inline with IP

Several NPE’s and PAE’s are adding know-how and knowledge transfer as part of the license deals, a leading indicator that IP professionals are starting to tightly align IP with innovation programs. For operating entities this is perhaps no change on output, except to suggest perhaps the bar is being raised on transfer of the technology by the receiving parties that are being asked to pay for licenses.

Challenge #3– Efficient Infringement

Compared to years past it appears if a company has the funds to extend and fight a patent infringement case, there seems a higher likelihood they can eventually defeat the patent. It seems the combination of legal tactics such as IPR filings and delaying payment (seemingly done by Samsung and Apple) are becoming common strategies considered by most firms now. The challenge of avoiding patents being so “efficiently infringed” may change in the US soon. But for patent holders that have quality patents, technology to easily transfer, and a global coverage, “efficient infringement” still remains one last hurdle at the end of a monetization program.

Challenge #4 – Converging Markets

Technology groups are converging – smart phones, connected cars, smart homes, wearables, internet of things – and with this convergence is non-traditional companies moving into new fields, such as the rumored Apple electric vehicle. Expect to see challenges by new entrants increasing new filing volume and old incumbents working to ensure future positions are protected now as R&D works to catch up to the convergence.

Challenge #5 – Buyers Market

On average the costs to acquire IP continues to be at record lows. Edward Jung has noted for Intellectual Ventures right now the average cost per asset is at it’s lowest in the history of buying assets. BRG Capstone recently presented the possibility of the price finally rebounding. Other firms are indicating if the capital is there to purchase quality IP there will be profits to be made in the longer term. Parties linking the upcoming “IP trends” with the low priced global IP portfolios will be at a distinct advantage in the years to come.

Where does this leave us?

Next post I will writeup the key actions all startups, investors, executives, and business leaders – not just IP focused leaders – need to take in 2016 to address the challenges.

IP Dealmakers: The 3 Key Take-aways for IP Licensing Deals in 2015

Things are looking up.

Spending 2 days with the IP and Investment leaders in NYC this week at the IP Dealmakers Forum, highlighted for me 3 key take-aways of IP licensing in today’s business environment: Optimism, Geography, Bargains.

1) Optimism

Despite the doom and gloom the past two years, most of the discussion was centered around the discussion of a (slightly) improving marketplace – with even a flat marketplace being something to be happy with. Although nowhere near market highs of past years, BRG Capstone provided an interesting chart asking if a price rebound was a real indicator of a more optimistic market.

While this gives brokers and sellers something to be happy about, on a complimentary note, the pure licence based companies still are moving to hedge their bets by diversifying. Gene Quinn summarizes Edward Jung’s keynote, noting how diversification is helping offset some of the challenges of the past.


One interesting point I heard was Brian Hinman from Royal Philips, where he noted that even inside the Philips IP group they diversify as well via investments in startups and other portfolios:


But just because it’s looking up doesn’t mean it’s still easy. The one point mentioned several times is how for small investors, lenience entities, or single patent sales / enforcement, the market challenges still hasn’t changed for them.

2) Geography Perhaps part of the optimism is the shift to Europe and China to supplement the US. And while the US legal environment is smoothing out, it is still to unpredictable to make large IP investments and bank on a return. With a reduced time to decision, Germany seems to still be the venue of choice with the predictability of process trumping the potentially lower returns.

It was interesting to note that even in broad geographies like Europe, a focus on some specific countries still dominates like Germany. But to simply to consider German as your EU strategy – and to do so without a quality patent – isn’t enough the bigger global picture still needs considered.

Even within Asia Pacific there are countries of note, with South Korea and Japan leading the play, with Singapore looking to be the IP hub via government incentives.

In short it’s still a global business that needs managed with topics like tax structures, enforcement, bond requirements, and injunctions to consider:

3) Bargains

Discussions around the conference seemed to indicate prices seemed to be at the point where it was low, and although it may drop a little more it was low enough to start to re-invest in purchasing – particularly for those that had the backing to buy and hold.

A few people indicated that investing outside of the traditional US only IP marketplace was done and the global portfolio was a necessity. BRG Capstone noted investing in Chinese patents was one thing to seriously consider.

Wrapup: As usual, the industry is constantly changing and it is those that are adapting quickly are seeing the financial benefits. Having a licensing program for any venture requires a key team to search out and execute on opportunities, and with new geographical opportunities and IP assets seemingly at the bottom (for now), there are deals to be made.

Is it time for a strategy reboot?

This month it happened again – meeting with a company about defining their patent strategy, only for them to discover their filing and prosecution strategy was the same as it was 5 years ago when they started.  Unfortunately for them the seemingly vast changes in law, license environments, and competitive space have left them with little relevant IP to use going forward… and a hefty legal bill to show for it.  There is an inherent risk associated with filing patents – the process is longer than it takes to get some products to market, and is tremendously costly.  This issue becomes compounded for most companies as they are too small to have their own IP group, so it becomes an outsourced action to counsel, managed by a VP or R&D leader, a line item checked in quarterly meetings saying “patents are underway”.

But what are the IP leaders doing? How are they positioning for success?

Innovation as the new IP

While the majority of organizations continue to plow onwards, perhaps only adjusting the patent budget line item as needed, a few companies seem to be tackling the change head on.  And much like a canary in the coal mine scenario, some of the first moves for change can be see in the professional NPE or Innovation firms.  For example, companies like Patent Utility – formed to remove the friction of licensing in the market – has pivoted to Haystack IQ which is linking innovation and IP together for clients.  ipCreate, an innovation on demand firm (also heavily linked with IP in the executive team) is also growing,  announcing a major fundraising effort earlier this year. Last month IAM Magazine reported that publicly traded NPEs Vringo and WiLAN have also hinted at becoming more involved in product development, and R&D activities, as has Marathon following its merger with Uniloc. It is not a coincidence that those heavily involved in IP are pushing for a greater link to tangible new innovations as part of their growth (or survival) strategy.

A change in thinking

It is becoming clear that the IP professionals are seeing future of IP tightly linked to innovation programs.  As first movers they will be spending a tremendous amount of time focusing to get ahead, while traditional R&D firms doing innovation will be left well behind with their old IP strategies. So this begs the question – are R&D based companies, who are centered around innovation for survival as well, updating their IP plans to be aligned with the IP professionals path?

There is a new fight within innovation emerging and the only thing that is clear is this: It is time for Innovation + IP strategy reboot.