Sep 9, 2011
US economic news has been notably bleak over the past month: GDP growth figures have been revised downward; US long-term debt has lost its AAA-rating; payrolls are reported (and expected to continue) to rise at a syrupy pace; and buyer sentiment, as tracked by the Michigan Consumer Sentiment index, is falling. Additionally, developments outside of the US such as sovereign debt issues in Europe, have brought insult to financial injury, leaving insightful analyst, Mr. John Mauldin, to quote the 1987 R.E.M. song, ... Read More
Jun 7, 2011
I recently published an article in Issue 47 of IAM magazine titled "The Value of IP as a Commodity". The article is a comprehensive description of IPXI and the ULR contract model for non-exclusive licensing. In addition, the article highlights the ongoing debate between IP professionals and IP market participants regarding the inefficiencies in IP valuation and technology transfer and how best to resolve these problems. The natural progression in IP monetization methods has led to the commoditization of IP assets, such ... Read More
Jan 28, 2011
I recently published a new article in Intellectual Property Magazine titled "The Value of Efficiency and Transparency in IP Licensing: Let the Market Decide". The piece discusses the need for a more efficient licensing model with market enhancing solutions providing accessibility and elminating transaction costs associated with the traditional bilateral licensing model. Read the article HERE.
Aug 11, 2010
You may want to be apprised of the opportunities provided by IP insurance. You may also want to simply be aware that the other side might have IP insurance.
I have published an article in this month's issue of The Federal Lawyer touching on these opportunities and the impact they may have on the IP litigation landscape. One interesting effect is on the market for IP transactions, specifically, the influence IP insurance may have on the decision to enter into a license.
Read the ... Read More
Jul 18, 2010
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
Jun 2, 2010
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
May 19, 2010
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
Apr 27, 2010
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
Apr 22, 2010
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
Mar 17, 2010
I have anticipated the movement of IP legal practitioners from an "Ex Post Facto" practice to an "Ex Ante Facto" practice. Essentially, this shift entails a move away from purely IP litigation or transactional practices, and a move towards the IP monetization space. I've identified a few examples thus far, and the newest name on this list is MioTek LLC, a new boutique law firm opened up in Milwaukee by Joe Miotke, former partner and IP practitioner for Michael Best & Friedrich. ... Read More