Forthcoming book chapter: IP Portfolio Management

IPStrategy_book_ImageLack of posts does not mean I have not been busy! On the contrary, I have a new publication coming out soon in the form of a book chapter.

IP Strategy: A Practical Management Guide will be out for publication shortly by Globe Law & Business, in the UK. As the co-author of one of twelve chapters, we address both what strategic portfolio management aspects need considered, and how they interact with the larger business strategy of an organization.

In practice IP managers and CIPOs oversee a process that addresses the critical aspects of IP management: ensuring the IP is codified and secured as legal rights where possible; decisions on types of IP asset protection from the numerous risks they face; managing the assets in alignment with stated business strategy; and keeping stakeholders focused on the long-term creation of value from IP.

Written for the IP manager or CEO, it provides practical applications and best practices on managing the IP environment within the corporate business. While it is just as important to generate an overall IP strategy for a business to execute on, it is also critical that there is follow-through on the portfolio development, supporting processes, and IP team.  As such the chapter covers the fifteen portfolio management influences within a typical organization, and how they need considered by an executive for successful portfolio alignment with the business direction.

My thanks to Stephen Robertson at Metis Partners for inviting me to contribute, and my co-author Paul Kallmes for putting up with the endless rounds of edits.


How an innovation and IP value-chain view can transform portfolio value

I recently authored an article in IAM Magazine, entitled “How an innovation and IP value-chain view can transform portfolio value“. I looked at how viewing an IP portfolio from the value chain of a business can identify gaps and opportunities for business and IP executives.   Overall, looking at the value chain from the perspective of both depth and breadth gives a more cohesive view of the landscape of the actual IP and innovation environment.

“An innovation-based decision about what to continue to invest in must be made in the context of the intellectual property and the business ecosystem”

The article goes into detail on how this depth and breadth view of the value chain give business and IP insights to a management team.    For example, using IoT as a case study, we are able to see that the highest proportion of patents is in the component side of the value chain. This suggests that interoperability via communications is well protected and ventures should develop an IP position accordingly.  However, it also suggests that interoperability protection via IoT systems is extremely unbalanced, with few filings around system-level customer offerings

With vendors pushing innovations to interoperability to achieve faster market adoption (estimated 40% of the IoT value is in interoperability), there seems to be a disconnect with the amount of intellectual property filed at the solution end of the value chain (only 5%). This view does not even fully consider the convergence of segments that will come from traditional ventures in other sectors. For example, the connected car has traditional suppliers such as Ford and Continental filing IP registrations alongside other IoT-savvy vendors such as Alphabet, Apple and other selected telecommunications companies.

There is additional IoT patent landscape data in the article, and is available here for download.

Written by Comments Off on How an innovation and IP value-chain view can transform portfolio value Posted in Patent

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.