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

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

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

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

In 2001, I saw Lebron James play in high school, and I remember telling myself, "that is the next Michael Jordan."  Of course, I meant this from a basketball standpoint, but you can't refer to Michael Jordan without refering to his brand.  MJ's brand is one of the most prolific in sports, and its longevity continues to impress.  It turned out that Lebron lived up to my basketball potential billing.  The brand of Lebron James has not disappointed either.   He recently partnered with McDonald's, ... Read More

The legal profession is very much like other successful services that have enjoyed longevity - it capitalizes on a need based on a recurring problem by fixing the problem(s) or preventing its persistence or recurrence specific to one client.  The legal profession with regard to intellectual property is no different.  In fact, the IP legal profession has perhaps relied on this business model to an even greater degree, as the general lack of comprehension with respect to intellectual property in the business ... Read More

I'd like to first thank all of the faithful IP Prospective readers over the last 12 months.  IP Prospective will celebrate its first birthday next month! 2009 has been quite a year - for good and for bad. The financial market was consumed by a somber mood for most of the year, with just enough shining moments near the end of the year to lead U.S. consumers and investors into 2010 with an optimistic vibe. The intellectual property market did what most expected ... Read More

Chicago-Kent Law School, a member institution of the Illinois Institute of Technology (IIT), will offer the first multidisciplinary Masters program in Intellectual Property Management and Markets in the United States. The IAM blog first broke the news to me, as Joff Wild wrote last week that Ron Laurie, long time advocate of and expert on the CIPO movement, apprised him of the new offering.  I had caught wind of such an interdisciplinary program in the works at an institution in the UC system ... Read More