This article is part of the “What Should I Do (WSID)?” series where I discuss various scenarios involving intellectual property and business. Topic suggestions are always welcome.
I’m often asked, “So what does your company do?” or “What services do you provide?” or “Do you do the same thing as a patent attorney?” Basically, “What can you do for me?”
What I do is to go beyond what a patent attorney, a product development or manufacturing expert, or a business strategy consultant, each alone can provide—I look for the hidden connections (or lack thereof) between your business, technology, and legal strategies that may be hindering you from achieving your company goals.
The photo accompanying this post was taken last weekend. What you see in the photo is a beautiful mountain vista on a clear, hot day. What you don’t see in the photo is a 500+ acre wildfire burning on the other side of the Flatirons, a mere 15 miles away, at the time the photo was taken. You don’t see the smoke because of the direction that the wind happened to be blowing that morning (The Cold Springs Fire was 100% contained and all evacuations were lifted as of yesterday—Thank you firefighters). Let me share the approach I use in my consulting practice to gain a broader, wholistic perspective to uncover what may not be obvious to the inexperienced eye.
MY BACKGROUND
Over the past ~20 years, I’ve written the first patent applications for inventors that became the foundations of growing startups, as well as managed the growth of large patent portfolios, both of which are exciting activities. I’ve also worked with CEOs and CTOs in determining how best to align the company’s product development and legal strategies to achieve business goals within budget constraints (remember the 2001 dot-com bust and the 2008 recession?).
I’ve managed the work product of a small army of legal professionals to make sure what I received from them were within budget and in alignment with my company’s business goals. I’ve been employee number one at a non-profit organization, worked with and within numerous startup companies, a couple of federal labs, a NASDAQ-traded corporation, even a Patent Assertion Entity. It’s been a fun ride, and I’ve earned a good-sized network of contacts and an MBA during the journey too.
Additionally, I’ve spent my share of time in dark laser labs and clean rooms working my own projects to truly appreciate the complexities of R&D and product development. I know what it feels like to lay on the floor of a Class 1000 clean room at 2am, waiting for the deposition chamber to pump down so that you can get your coated parts out of the machine, or to get production parts rejected by QA, after a multi-hour production process, because the effective aperture of your parts were a fraction of a millimeter smaller than spec.
Combining the above, I look at your business, technology development, and legal strategies in an integrated way. While patent attorneys tend to focus on the specific innovative ideas of your company, product development professionals look at the manufacturability and marketability of your products, and business consultants may analyze your business processes and strategies, I try to break down these silos so that all of these different perspectives are working together toward a common goal.
THE METHODOLOGY
The first phase I use is based on questions. In our initial conversation, I’ll ask specific questions about:
- Your product
- Your market
- Your customers
- Your company
Some sample questions I use are summarized in a document you can download here. These questions are intended to clarify whether Patents Integrated can help your company, or perhaps I may be able to introduce you to another service provider who can guide you.
For example, Company A may be a new startup in the process of defining their Minimum Viable Product (MVP) based on their new technology. I’ll probably ask for as much detail about the new technology, as can be provided at a non-confidential level, about any competing technologies that already exist, known competitors, target customers, the market, etc.
Or Company B may be positioning itself for a fundraising round and wants to make sure their intellectual property assets will positively impact their valuation and negotiation position. In this case, my questions will likely revolve around the company’s IP strategy thus far, how you’ve been interacting with IP counsel (if any), comparable companies in the same market, and potential investors.
The second phase is for me to spend a certain amount of time researching and analyzing your company’s pain points. This process may be conducted for free for a certain amount of time at the introductory stage, or for a fee for a more in-depth analysis.
For Company A, I will likely look into existing literature and patents around the new technology, as well as information about the market place for potential products. I may also see whether/how Company A may be able to protect their competitive advantage via, for instance, patent protection, trade secret implementation, or copyright registration.
For Company B, I would probably dig deeply into the filing history of any existing IP assets of the company, IP owned by comparable companies and competitors, and historical attitudes of the potential investors.
In the third phase, I give your company an actionable plan to move forward. The action steps will take into consideration your particular business goals, realistic budgets, as well as immediate and long-tern product development strategies.
For Company A, perhaps the company could benefit from an employee training session on innovation awareness and documentation in order to encourage a more disciplined approach toward product development. Or they may need a plan to implement a trade secret protection policy. Alternatively, a longer term patent filing strategy that aligns with their budget projections and product development plan may be useful. Another action may be that they need to approach a competitor for a cross license because the competitor holds intellectual property that is close to Company A’s MVP.
For Company B, maybe I discover that the potential investors do not value IP in their particular technology area so that they might consider other funding sources. Or I may find gaps in their IP portfolio that need to be remedied, such as that their existing patents do not adequately protect their products and their innovative edge, in which case additional filings and better coordination with IP counsel may need to be facilitated. Still another possible course of action may be to work with an IP valuation specialist to professionally value the worth of their IP portfolio.
Your company is a complex creature. Just like you need to take care of your physical, mental, and spiritual health in order to thrive, your company needs a balance of business, technology, and legal strategies all working together in order to succeed. That’s where a wholistic view of your company can help you better identify and address any weaknesses you may have so that you won’t be taken by surprise by a wildfire burning just over the ridge.
Best wishes for a safe and productive journey in your entrepreneurial travels.
About the Author and Disclaimer: Yoriko Morita has worked with innovators in a variety of contexts, in a law firm working for inventors, as in-house IP director, and as a licensing professional. She currently helps clients with such IP-related questions, as well as developing integrated business/technology/patent strategies, through her company, Patents Integrated. The contents of this article are intended to be informational only, not legal advice. The reading of this article does not establish an agent-client privilege between you and Patents Integrated, and Patents Integrated is not responsible for any damages arising from your use of the information in this article under any circumstance. Your use of the information in this article is at your own risk, and you should seek the advice of a licensed legal professional regarding your own specific situation.
