On January 24, 2009, the IAM Blog posted a piece titled “Intangible Values Collapse – the old 70% to 80% claim is now officially dead and buried.” The text proceeded to discuss the varying methods for valuing intellectual property and the feasibility for defining a standard valuation method. The post received nearly 20 comments from lawyers, consultants, economists, journalists, and executives – creating a three-day long forum debate regarding the real value of and valuation methodologies for IP. No other IAM Blog post in January had more than two comments. It was obvious that this was the topic of the IP market. And it still is. How do we instill confidence in the IP market with regard to the value of IP? Joff Wild wrote in that timely post: “I don’t think there are many of us that are naïve enough to believe that it will be possible to create mandatory standards [for valuing IP]. . . or voluntary standards any time soon.” He is correct.
We would not have to rely on a single valuation method, however, if a transparent IP marketplace facilitated market-based pricing and produced comparables. Enter IPXI.
The Next Big Thing on Monetizing IP: A Natural Progression to Exchange-Traded Units, Co-authored with Jim Malackowski, LANDSLIDE, Volume 3, Number 5 (ABA, May/June 2011)
The 1990’s was the decade of information technology (IT) - a decade where information was important, but the use, disposition, and security of information became paramount. The 2000’s was the decade of intellectual property (IP) - a decade where an idea was royal, but exclusive rights to an idea became king. Continuing the natural progression, we currently reside in the decade of intangible assets (IA) - a decade where innovation is the door to success, but monetizing innovation is the key. A natural progression in the history of IP monetization has led to something new . . . and potentially big.
The Value of Transparency and Efficiency in IP Licensing: Let the Market Decide, INTELLECTUAL PROPERTY MAGAZINE (February 2011)
The market for technology licensing has always been clandestine. There has never been a consistent source for price discovery. No common platform has ever existed for IP owners to find potential licensees, and vice versa. And no systematic or standardized process for facilitating transactiosn involving the transfer of technology has ever been successfully established. The need for an efficient and transparent marketplace for the exchange of IP rights has been addressed in academia for years. Finally, the concept is being turned into a reality.
Intellectual Property Insurance: Changing the Economics of the IP Litigation Landscape, THE FEDERAL LAWYER (July 2010)
Although litigation insurance is not new, the growth of intellectual property insurance in the past decade warrants a consideration of the benefits and disadvantages associated with this model, as well as its effect on the IP litigation landscape. At a minimum, it is worth noting that the number of companies acquiring IP insurance is increasing. Companies should be aware that this opportunity exists, and they should also be aware that potential opposing parties in litigation may have IP insurance policies in their pockets.
Intellectual Property Due Diligence: Shifting the Practice from Ex Post Facto to Ex Ante Facto, THE FEDERAL LAWYER (March 2010)
The 1990’s was the decade of IT. The 2000’s was the decade of IP. The 2010’s will be the decade of IA (intangible assets). With this decree comes a charge of responsibility to every company in the new decade to identify, organize, and efficiently manage its corporate assets comprised of intellectual property (IP) rights. The growing amount of corporate value attributable to intangible assets has forced the need for this ex post procedure to become an ex ante routine. And if the business advantages of identifying and managing IP before a legal event aren’t enough to entice a company to take on this responsibility, federal corporate disclosure laws and director liability rules may require such practices for compliance purposes going forward.
Economy Pulse Check: The Valuation, Finance, and Exchange of Intellectual Property, THE FEDERAL LAWYER (May 2009)
The rising tide of the recession has brought with it a wave of change in our approach to commerce, but perhaps no transition has provided as much optimism as the growing share of commerce involving intellectual property assets. Intellectual property has been increasingly recognized as a burgeoning asset class, an important financing tool, and a revenue-generating instrument for exchange. Acknowledging this phenomenon, the United States has joined a global initiative to help push a common knowledge of this use of intellectual property, as well as to facilitate a legal regime that promotes the many opportunities for intellectual property in commerce. The initiative has focused on three chief areas: IP valuation, IP finance, and IP exchange.
An Intellectual Property Audit Can Maximize a Company’s Value, BUSINESS FIRST MAGAZINE (March 2009)
While IP value generally isn’t included on a balance sheet, its distinctive worth to a company shines at a time when standard revenue streams demonstrate their volatility. Nevertheless, IP that is core to a company’s operations is frequently not protected, deployed, or enforced to exploit the competitive opportunity it creates. In addition, non-core IP often consumes costly R&D resources that should be focused on core IP. Still more often, unutilized high quality IP sits on a company’s shelf when it could be licensed out for profit. The path to IP optimization begins with discovery, and discovery is effectuated through an IP audit.
Monetizing Intellectual Property, THE LANE REPORT (February 2009)
Consider the following: according to the U.S. Patent and Trademark Office, intellectual property (IP) in the U.S. is worth over $5 trillion - more than double the federal budget plan for fiscal 2009. Statistics like this leave many economists, investors, lawyers and corporate executives asking why this value is never fully realized or liquidated. Yet, savvy companies have realized fruitful methods to monetize intellectual property and experience its potential liquidity. These practices range from the conventional models of sales and outbound licensing to new outlerts such as joining IP pools or participating in IP auctions and IP stock markets.
Capturing IP and The Knowledge That Makes It Valuable, THE CORPORATE COUNSELOR (February 2009)
While every business keeps its portfolio of assets, not every business manages its most crucial assets: intellect and knowledge. Indeed, these assets may not easily be measured on a balance sheet, but they are the fundamental resources that maintain a competitive edge in any industry. Certainly, much of these assets goes undocumented and ends up lost, or not even captured. Intellectual property assets created by employees are frequently unnoticed, disregarded, or forgotten. Operating knowledge, without which intellectual property would be valueless, is routinely lost through retirement or attrition. Organizational “know-how” and intellectual creations that increase a company’s efficiency must be paramount considerations in the growth and development models of a business. Fortunately for corporate leaders, employee-produced intellectual property, and employee-retained knowledge assets, can be captured and protected from the inception of business
Commoditizing Intellectual Property Rights: The Practicability of a Commercialized and Transparent International IPR Market and the Need for International Standards, 6 BUFF. INTELL. PROP. J. 101 (in publication, Spring 2009)
In a small recording studio in New York on January 15, 1965, Nina Simone sang the unforgettable lyrics to the song titled “Feeling Good”: “It’s a new dawn, it’s a new day, it’s a new life for me, and I’m feeling good.” It is safe to believe that the talented singer as not crooning about the prospective outlook on intellectual property rights. Nevertheless, today the words bring new meaning to the current intellectual property context. It is certainly a new dawn, a new day, and a new life for intellectual property holders, and they should all be feeling good about it. Intellectual property rights (IPRs), inefficiently applied and arbitrarily valued potential money-earning assets, are on the brink of becoming consistent and transparent articles of trade and investment.
Termination Rights: A Second Bite at the Apple, THE FEDERAL LAWYER (January 2009)
17 U.S.C. § 304(c), which affords termination rights to authors, has been largely unused since its implementation-mostly because its applicability is time-sensitive. Two recent federal court victories for authors - that of Siegel and Shuster, creators of Superman, and the estate of Eric Knight, who wrote the novel Lassie Come Home - have heightened the awareness of these rights and instilled fear in corporations that hold large copyright catalogs. In order to be successful, however, zealous attorneys for the Siegels and Shusters of the world must sneak through a small window of time filled with numerous potential defenses.
Famous Marks: What Does It Mean To Be Famous Worldwide?, THE FEDERAL LAWYER (October 2007)
Despite a bulwark of authority in support of seemingly commonsensical ideas expressed by the Ninth Circuit in Grupo Gigante, the famous marks doctrine is not mentioned in the Lanham Act or in any other federal law. And therein lies the difficulty, says the Second Circuit. Despite acknowledging the famous marks exception and its extensive recognition by other legal bodies, the Second Circuit in ITC Ltd. v. Punchgini rejected the plaintiff’s claim for protection of a famous foreign mark that was not registered in the United States, holding that “Congress has not incorporated the substantive protections of the famous marks doctrine … into the relevant federal law, and this court cannot recognize the doctrine simply as a matter of sound policy.” ITC Ltd. v. Punchgini, 1482 F.3d 135, 159 (2nd Cir. 2007).
Be Careful What You Wish For: Copyright’s Campaign for Property Rights and an Eminent Consequence of Intellectual Monopoly, 10 CHAP. L. REV. 787 (Spring 2007)
This Comment demonstrates to copyright proponents that their very insistence on lobbying for absolute and perpetual protection actually opens the door to unwanted consequences. First, there are fundamental problems associated with characterizing intellectual property as tangible private property. Although fine arguments have been made by proponents of the private property theory, most of these proponents are self-interested owners of intellectual property rights. These owners understandably have a vested interest in securing profits for themselves in a system that promotes rent-seeking activities. Nevertheless, affording to intellectual property the same perpetual and absolute property rights that are granted to tangible private property causes economic inefficiencies as well as internal friction in the creative process.