IP P®OSPE©TIVE

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 it to — continue to intrigue, mystify, and grow. While there were somber moments in the IP market as well, the overall review on the year in IP management is promising. Let us look back at a few of the top moments in the IP market for 2009:

• ICANN adds new Top Level Domains for Websites.  Among those soon to be allowed will be self-identifiable trademarks, and many generic identifiers such as .music.  Additionally, ICANN is preparing to allow the use of scripts other than english letter characters, such as Chinese and Farsi. This program is already in use, but development continues.  This is extremely important to company’s relying on web presence and internet content for growing value.  Domain names are, for many companies, strongly valued assets  that must be maintained, strategically managed, and protected. 
• Sixth Circuit decides Cincom Systems, Inc. v. Novellis Corp.  At first glance, this case seems to be a lesson in corporate law, but the message transcends corporate law and reaches the IP professional or CIPO of any relevant company.  As more and more companies have taken a proactive position with regard to IP due diligence, problems such as the one that arises in this case can and should be avoided.
•  The Rise of IP Market Players Such as RPX.  Over the last year I have introduced numerous “IP Market Players” in my “IP Market Player of the Week” column.  The IP market has welcomed a host of new participants this year, many with innovative business models and theories on how the IP management process should work.  One of the most interesting, and successful, of these is RPX - a defensive IP aggregator that sells memberships to its pool of patent licenses to protect operating companies from offensive IP aggregators.  RPX celebrated its first year in business in November with its 20th subscriber.
• A new President and a new IP policy.  A new political administration took over Washington in 2009, and in the new administration’s first year we have already seen three very large Presidential appointments that will have large implications on IP law and policy, and therefore the IP markets.  The first of these was the appointment of Justice Sotomayor, who brings some rare intellectual property experience to the U.S. Supreme Court from the 2nd Circuit bench.  The next was the appointment of David Kappos as the Director of the USPTO.  Kappos has not wasted any time in reforming IP policy in the U.S.  The third was the President’s nomination of Victoria A. Espinel as the country’s first IP Czar, charged with enforcing the nation’s IP laws.
• Anne Leibovitz uses lifetime of copyrights to secure large loan from Art Capital.  A small story in some respects, but a large leap for IP securitization.  Advocates of the flexibility of intangible property in the finance world were very pleased.  Morgan Stanley followed up with a large IP securitization deal of its own.
• The dismal performance of IP auctions.  Ocean Tomo saw a rise in sales, and in interest, in its IP auctions over the last 3 years until 2009.  The first auction of 2009 in March, held in San Francisco, proved that the IP market was not isolated from the financial meltdown.  After selling 48 out of 118 lots in Chicago six months prior, only 6 out of 80 were sold in San Francisco in March.  Nevertheless, the event was not a total loss, as the large congregation of talent and experience in the IP market made it evident that the market will continue to grow.
• The rise of IP brokerage services.  In June, just before Ocean Tomo’s summer IP auction in Chicago, Ocean Tomo sold its transactions business to ICAP.  Since this move, ICAP has pulled together an impressive cast to build its ICAP Ocean Tomo patent brokerage unit. 
• Law Firms begin to offer IP management and monetization services.  Two major law firms, Morrison & Foerster, LLP and Robins, Kaplan, Miller & Ceresi, have commenced ventures whereby they will offer strategic IP management services - a first for a law firm.  Morrison & Foerster decided to collaborate with an IP management firm, while RKMC launched a new practice group to offer a “value-focused IP group”.  I had been waiting for this movement to begin, as this is a sign of things to come for IP professionals.
• The topic of IP valuation standards was pushed to the forefront of IP market conversations.  The issue of standardizing IP valuation methods for the advance of the IP market was a hot topic of conversation all year long.  It was discussed in depth at both Ocean Tomo conferences, the IPBC 2009 in Chicago, and many other panels and events.  IAM magazine made it the top story in an issue.  The conversation continues, but we saw it come a long way this year.
• Blockbuster IP deals.  While the M&A activity throughout the world was way down, two of the largest deals that were executed in 2009 involved significant intellectual property rights.  The first was Pfizer’s purchase of Wyeth.  The other was Disney’s purchase of Marvel’s intellectual property.
• Michael Jackson and his real assets.  We learned that the value of copyrights can increase overnight.
• Centralization of the IP Professional circuit.  The IP Media Group and IAM magazine created the IAM 250, the first central look-up and rolodex for IP professionals.  This is proof of the burgeoning IP market and the solidification that the IP profession is just that - a profession.
• A U.S. institution offers a graduate program in IP management and markets.   Nothing like this interdisciplinary program existed in the U.S. until Chicago-Kent College of Law announced that it will offer a degree focusing on IP creation, valuation, protection, finance and business - all in one program.  Discussions about the need for such a program had been thrown around the table at conference luncheons over the past few years, and it is pleasing to see the fruition of the idea.  Chicago-Kent has introduced Jacqueline Leimer as its Distinguished IP Pracitioner-in-Residence to create and chair the program.  Ms. Leimer is a distinguished attorney, having spent 13 years with Kraft Foods as Chief Trademark Counsel and most recently as Vice President and Associate General Counsel of Global Intellectual Property.  Ms. Leimer was President of the International Trademark Association in 2004.

These are just some of the top 2009 stories in intellectual property management.  For a fantastic and much longer list of 2009 stories dealing with intellectual property law from a much broader lens, see Managing Intellectual Property’s “editors picks“.

Cheers and happy new years!