Q: If my company engages you, will that replace the need for outside IP counsel?
A: In very few circumstances would the services I offer be a replacement for outside IP counsel. The primary services I am offering are designed to help you define your IP needs and then to help you fulfill those IP needs in an efficient manner in combination with quality outside IP counsel.
Q: I have been told that most patents are not practically worth asserting. Is that true, and if so, why spend money and time developing a patent portfolio?
A: For many companies in many industries, there probably is a lot of truth to the statement you have been told. However, a point to remember is that many patents that are valuable are exponentially valuable. I have experience working with corporations to evaluate their industries and their positions in their industries to facilitate setting IP goals, like patent filing goals. There are other value elements to patent portfolios that should be considered relative to your particular circumstances as well.
Q: Is it better to have a whole bunch of patents or just a few really good patents?
A: Two answers to consider:
1) It is probably better to have both large numbers of patents and highly effective patents. However, large numbers of highly effective patents require a great deal of technical innovation coupled with ownership rights. Patents can also be very expensive to obtain and maintain. This circumstance illustrates why it is so important to be vigilant in analyzing the ideas available to your company for patenting or licensing. You should carefully and continually evaluate your positions relative to competitors. Highly effective patents are probably more important, but in some circumstances, volume of patents relative to competitors can be very important too.
2) You probably will not know for sure until you really need the patents. If you could accurately predict against whom you would want or need to assert your patents, you could probably cull and concentrate your filings and prosecution in a more cost-effective way. However, some acts of culling a portfolio are permanent, so reducing numbers of patents introduces some risk of loss of competitive position. Evaluating IP rights in light of the business realities of your industry is likely to lead to a more cost-effectively managed patent portfolio. Continued, careful evaluation by a person or team knowledgeable about your business and about IP rights is essential to effectively selecting the number and focus of patents your company pursues.
Q: Why should we hire you to manage corporate IP functions rather than traditional outside IP counsel?
A: In most cases, the services I offer are different from services a traditional outside IP counsel provides. My focus is on integration of IP legal functions with business functions and management of overall processes with an eye toward seeking multiple, competitive sources for outside IP counsel services. Outside IP counsel may be hired to manage integration of the IP legal functions and business functions, but 1) some outside counsel do not have much experience managing these types of processes, and 2) outside counsel may not be motivated to seek multiple, competitive sources for provision of typical outside counsel IP legal services.