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.

Top IP business insights to read (Sept 2015)

In the past month I came across 3 articles of interest and insight  – worth reading when you have the time:

If you have others to add, please let me know and I will post them as well.

October Event Calendar: IP & Business Innovation Forum

For those local to Victoria, I am helping organize an IP-Business forum in October – Mark your calendars for October 8th.  Details are below and you can register here.

Event Calendar: IP & Business Innovation Forum

Register today – limited availability

If you are a R&D leader, inventor, investor or CEO, CFO, or CTO of a growing technology-based venture join us of an afternoon seminar featuring thought-provoking discussion from six industry experts. The session will conclude with a networking reception. Local beer, wine and appetizers will be served.

WHEN:  Thursday, October 8, 2015 – 3:00 pm – 6:00 pm

A seminar examining significant factors that may dictate whether your venture is successful – These factors include the interaction between R&D, Innovation, IP, and Business.

A panel of industry experts will address questions including:

  • What are the best business structures for operating success?
  • What are the strategic approaches connecting R&D, innovation, and patents?
  • Why and how does a business focused patent strategy need created?
  • How do SR&ED, and other tax challenges impact your venture or investment?
  • Why should company stakeholders care about these topics, and what is the cost of getting them wrong?

WHERE: Laurel Point Inn, Merino Room.


  • John McLeod – Reed Pope Business Lawyers
  • Anne Flanagan – Alliance Patents
  • James Ramsbottom – Merizzi Ramsbottom & Forster
  • Peter Cowan – Northworks IP
  • Jason Cheng – PwC
  • Elisabeth  Finch – PwC

Each of our speakers will talk to you about their area of expertise for twenty minutes, followed by a panel discussion moderated by Peter Elkins of the Capital Investment Network

COST: $45, includes refreshments and appetizers.

REGISTER: To register click on the following link

Speaker & Session Details:

 Session #1: Structures for Success
(John McLeod, Associate Counsel at Reed Pope Law Corporation)

This session will highlight the importance of adopting business structures that suit your operating environment and capital raising, tax, IP and other goals.  John will review steps you can take to document ownership of IP as between your business and its founders, employees, consultants and partners.  If you build value, the strength of your IP portfolio will likely be tested through due diligence or litigation or both.

Session #2: Developing and Protecting Technology
(Anne Flanagan, Owner, Alliance Patents)

A strategic approach to developing and protecting technology is essential for any company, whether a start up based on new technology, or an existing company looking to maintain their competitive advantage.  This session will discuss strategies to mesh company R&D with the development of a patent portfolio.

Session #3: Canadian Organization Filing Strategies
(James Ramsbottom, Partner & Patent Agent, Merizzi Ramsbottom & Forster)

A strategically built intellectual property portfolio is the cornerstone any organization involved in the development, marketing and selling of technological advancements.  This session will review some high-level patent prosecution strategies that may be available to organizations for developing their patent portfolios in a timely manner, using programs available through Canadian Patent Office and other foreign patent offices, which can be leveraged internationally.

Session #4: IP and strategies to secure sustainable competitive advantage
(Peter Cowan, Northworks IP)

An IP strategy is vital for all businesses that rely on IP to support or generate revenue. This session will review the key points in building and developing a business focused IP strategy that can both lock out competitors as well as create a scalable and sustainable competitive advantage.  It will illustrate how to create and evolve your IP strategy, and bring the discussion into the boardroom.

Session #5: SR&ED Update: Are your claims aligned with new case law & CRA expectations?
(Jason Cheng, Partner, PwC)

The Scientific Research & Experimental Development (SR&ED) program remains a key source of funding for innovative businesses. Ensure that you continue to protect your investment in R&D by learning the latest on this key tax credit program, understand the current approach the CRA is taking on file reviews, and hear about the implications of significant recent court rulings that could be beneficial to your claim.

Session #6: Moving and using IP across international borders: tax opportunities and challenges
(Elisabeth Finch, Partner, Tax Services, PwC)

This session will explain the international tax challenges you will face when creating an effective international IP structure, in a way everyone can understand. Elisabeth will also highlight the reasons your company’s stakeholders will care about these structures being right, and the costs of getting it wrong.

Session #7: Bringing it all together: Business, R&D, IP, & Innovation

(Peter Elkins, Capital Investment Network).

Peter will host a moderated discussion with the panel members.


Top IP business insights to read (June 2015)

Last month I came across 4 articles of interest and insight  – worth reading when you have the time:

If you have others to add, please let me know and I will post them as well.

Inclusion into the IAM Strategy 300 list for 2015

Strategy 300_Individual 2015Surprised and humbled – for the 2nd year in a row I have been listed in the 2015 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 16 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 Coca-Cola.  I’ve come far, but still have a long way to go!

My congratulations to all those that are on the list in 2015.

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