Have you often wished you had an experienced, business-savvy, and diligent intellectual property counsel on your team…

IP Legal

1. To liaison with technical staff and assure that meritorious technology, and business method innovations are promptly identified and soundly protected?
2. To monitor and coordinate with outside IP counsel to assure timely and cost-effective delivery of a competent work product?
3. To help identify and prevent destructive future conflicts with IP holdings of competitors? (For more on IP legal counsel issues, click here.)

IP Management, Monetization, and Licensing

1. To help boost the bottom line by improving the performance of underutilized technologies, patents, brands, software, and other IP assets through licensing, collateralization or other exploitation initiatives?
2. To help develop processes for inventorying, databasing, sharing, and better managing IP assets? (For more on IP management issues, click here; for more on IP monetization, click here; for more on licensing, click here.)

IP Strategy

1. To help formulate IP asset strategy, and advise how to integrate it into business strategy to improve business performance?
2. To aid in an understanding of the dozens of ways IP assets can be used to boost margins and market share, and meet other business goals?
3. To advise on how IP assets can be used to boost share price and support financing initiatives? (For more on IP strategy, click here.)

Searching

1. To perform validity searches on patents advanced against your products or processes, or even on your own patents in advance of enforcement litigation.
2. To run patentability searches to help determine whether an invention may be patentable.
3. To search adversely held patents in the clearance of a product or process for introduction into the marketplace.
4. To help assess a patent portfolio during M&A or in-licensing initiatives. (For more on searching, click here.)

1. If you are looking to acquire, to counsel you on how to identify candidates whose IP assets synergize best with yours for long term growth and profitability?
2. If you are looking to sell, to counsel you on how to maximize the worth of your company by identifying and valuing your IP assets?
3. If you have recently acquired a business, to help integrate the acquired IP assets with yours for maximum leverage? (For more on M&A issues, click here.)

Now you can have experienced IP counsel on your team… in house as needed, or – on a permanent part-time basis – one or two days each week, or even one-half day, to fill that critical resource need in technology companies.

I recently opened an intellectual property practice in Chicago to help companies not just grapple with the many IP challenges they have today, but to help them turn intellectual property assets into major drivers of profitability.

Those that understand IP assets and how they can be leveraged as today’s most powerful business tools will succeed. Others, suffering from IP ignorance or indifference, likely will suffer .

Zenith's $300 Million Licensing Bonanza

In 1992 while Chief IP Counsel of Zenith Electronics, I directed a first-ever audit of Zenith's approximately 1000 active patents. We discovered four “cable-ready” tuner patents which were infringed by every TV and VCR sold in the United States – more than 30 million units per year. The licensing program we conducted generated $25 - $30 million each year since 1991 and netted more than $300 million for Zenith when it finally expired in 2003. These patents would have expires in the dark but for the audit!

In the first three years of the licensing program alone, these four newly discovered, dust-covered patents produced more bottom line profit for Zenith than did all manufacturing operations of Zenith in the quarter-century I practiced IP law there! That included televisions, VCRs, audio products, cathode ray tubes, power supplies, etc., and the operations of all subsidiaries including Zenith Data Systems (computers) and Heath Company.

Out of Zenith ... Into IP Management ... and Ultimately an Independent IP Practice

This Zenith experience led me to pursue opportunities in IP management. After a stop-over at Marshall Gerstein & Borun, a blue ribbon Sears Tower IP boutique, I spent three years with Arthur Andersen as its Director of IP Strategic Services. (For details on my background credentials, which included employment with GE, Polaroid, and a small high tech firm, click here.)

While I benefited from the diverse corporate, law firm, and Andersen experience, what I really wanted throughout most of those 35 years was to establish an independent practice devoted to helping companies use IP assets to achieve business objectives. So on June 1, 2000 I gave up the steady paycheck for the challenge of an independent, broad-based Chicago IP consulting practice. My clients are small and mid-sized technology companies lacking inside patent counsel, including Chicago-based Andrew Corporation, Zebra Technologies, and Sonoscan Inc., all global leaders in their fields.

I enjoy tremendously understanding intimately the challenges and dreams of clients, and in helping them improve their use of IP as a powerful and extremely versatile tool to boost the bottom line and corporate worth.

How Can I Compete with the Large IP Firms? ... Easily!

The large IP firms excel primarily at IP litigation and prosecution. Where they are weak, I am strong.

Business Focus

I have a business focus -- promoting the use of IP, whether home-grown, outsourced, in-licensed, purchased or alliance-shared -- in any and every way possible to meet stated business goals. It all starts with business strategy, which today necessarily embodies IP strategy. Expending valuable resources on patents or other IP assets which do not further business goals is utter waste. It is always better to know exactly what purpose a patent, brand, proprietary technology or other IP assets will serve in the business strategy before the investment is made. Business success follows a sound business plan, and a sound business plan today must be supported by a sound IP strategy.

Cost

50% or more of large law firm's invoiced billings go to cover overhead. My overhead is significantly less. Second, cost must be considered in terms of value received. Advice on basic corporate IP strategys worth a lot more the than time spent drafting a patent specification, for example. Third, the quality of the counsel received must be considered. Is the work being performed by a first year associate, or by an experienced veteran?

To keep costs down, law firms often assign your work to a bottom tier associate -- smart, of course, but usually inexperienced. But even his (or her) bills may be so high that you can't afford to invite him to your place to get immersed in your problems. So even if the firm cared to get involved in your business problems (which few do, being lawyers first), its cost structure precludes it from developing the hands-on, business-oriented counsel which businesses today must have to survive.

My value is greatest where my experience is best utilized. For example, I have personally prepared and prosecuted hundreds of patents. However, my strength in that arena now lies in supervising the process to assure first that the right inventions are being protected, and second that top quality patents are being obtained. After grilling the inventor, I often draft a few model claims which the patent drafter then uses as the core around which to build the application.

Recently I was asked by a Fortune 500 company to analyze the merit of two patents that had been obtained by outside counsel on an ingenious GPS (global positioning system) concept. I determined that the first patent was drafted so narrowly that one literally could not have infringed it with any commercially viable system.

The record showed that the second patent was an attempt by the law firm to rectify the problem. This effort resulted in a patent with claims so broad as to suggest that the inventor had invented GPS - a then 20 year old technology with thousands of extant patents and hundreds of commercial products. The client said that it had spent more than $50,000 to obtain these patents, which it agreed were of no value whatsoever.

Responsiveness

I am on call 24X7 ... and I always answer the telephone myself when I am in the office. When I am not in the office, I am usually at a client site, digging deeply into its opportunities - - the only way to give useful strategic counsel. Only by analyzing the "big picture" up close can it be seen as a myriad of those details "where the devils are". Immersion is the way to the truth.