IP P®OSPE©TIVE

Please forgive my temporary hiatus from IP Prospective updates, for the last two weeks have been hectic.  In the last two weeks, I have made the decision to leave the private practice of intellectual property law and join Gerard Pannekoek's team at IPXI in the pursuit of standards, efficiency and transparency in the IP marketplace.  I have followed the development of IPXI closely for over two years now, as I have posted about IPXI more than once on this medium.  As an outsider, I have watched the growth of the idea into ... Read More

I have followed the developing story of John Desmarais and his reported purchase of 4,000 patents from Micron as covered by Joff Wild and the IAM Blog, among other bloggers.  A very nice recap of the story, the questions that have been raised, and the meaning of it all can be found HERE under an IAM Blog post titled "Why Micron Matters".  The better title, however, might have been "Why IP Matters", for this story truly brings to light (if all reported facts are accurate) ... Read More

I finally got around to putting up my article on the importance of and possible requirement for ongoing IP Due Diligence.  The article can be found HERE, or  under the Published Articles page of IP Prospective.  The article was first published in the March/April 2010 issue of The Federal Lawyer, the official publication of the Federal Bar Association. Also, check the upcoming July issue of The Federal Lawyer for my article on the impact of IP insurance on the IP litigation landscape and ... Read More

The discussion of how best to create a liquid and transparent market for intellectual property rights never gets old, and every step taken to offer new and complete information to further that discussion is a step in the right direction. The discussion has morphed from ideas to talking points to individual and collaborative research and publications (See Mark Lemley of Stanford Law and Nathan Myhrvold of Intellectual Ventures' article "How to Make a Patent Market") . . . and now to the ... Read More

Here is a talking point that every IP strategist and professional in the IP monetization business has been waiting to put in their arsenal of persuasion efforts:  MIT agrees.  I was put on to this short piece from the MIT News Online by Andrew Watson at ipVA.  The piece discusses the views of MIT Sloan School of Management Senior Lecturer Professor Joseph Hadzima Jr., which are quite in line with all that IP Prospective stands for.  In short, quality IP and an efficient ... Read More

In a report yesterday, Bloomberg shed light on what PatentFreedom is calling the 2nd largest NPE in the country.  Second, of course, to Intellectual Ventures.  John Desmarais, a former big-firm lawyer and defender of large corporations in patent infringement cases, has taken the independent train to NPE-ville.  According to the report, Desmarais left his firm in May to form Desmarais, LLP.  But this wasn't the usual "big time partner leaves big firm to start small shop" deal.  No, Desmarais seems to have had a plan in place for ... Read More

Tax incentives are always a large part of a corporate law practice.  Taxes can dictate the structure of a deal, help provide financing for an acquisition, or simply cause an organization to incorporate elsewhere because of better tax benefits.  When a company is beginning an IP licensing program, tax penalties, benefits, or other incentives could play an important role in forum shopping (if a company should have the luxury of being able to do so).  While many refer to those jurisdictions with ... Read More

I read an interesting article today in Network World titled "The Defensive Patent License makes patents less evil for open source".  The article describes the efforts of two law professors and directors of UC Berkeley's Samuelson Law, Technology & Public Policy Clinic to create a Defensive Patent License (DPL).  According to the article, the DPL is supposed to create protection mechanisms for open source practitioners in the software industry from NPE's.  While the article reflects archaically upon NPE's as "trolls" and states ... Read More

Whether for better or worse for the IP litigation landscape - depending on who you are and from what perspective you view the enforcement of intellectual property rights - the intellectual property insurance business model is catching on with companies that view themselves as "at risk" entities.  I recently sat down at a meeting with Chuck Baxter, General Counsel and Senior Underwriter for Intellectual Property Insurance Services Corp., to learn first hand what services are offered by an IP insurer; how might these services benefit a business ... Read More

I delivered a presentation today to the Kentucky Bar Association's Annual Corporate Counsel Conference titled Strategic IP Management: Shifting the Practice from Ex Post to Ex Ante.   The conference was well attended by numerous In-House counsel from businesses across the state, small and large.  Although it was an unconventional topic for an In-House Counsel CLE seminar, the presentation was well received and elicited a number of comments and questions afterward.  The outline materials for the presentation can be found HERE. Read More