From Assets to Profits (Ebook) von Bruce Berman

About the Editor xix

Introduction xxi

Part one IP Business Models 1

Chapter 1 Out of Alignment Getting IP and Business Strategies Back in Sync 3
By Dan McCurdy

Perspective 3

The CEOs Dilema 4

The Emergence of Patent Trolls and Their Impact on IP Licensing 7

In A Changing IP and Business Environment, What is the Correct IP Strategy? 8

The Need to Tie Intellectual Property Strategy to Overall Business Strategy 10

Using the Companys Intellectual Property to Improve Business Performance 13

Not Magic Just Hard Work 16

Chapter 2 Evolution of the Technology Firm: IP Rights and the Business of Licensing 19
By Bryan P. Lord

Perspective 19

Introduction 20

The Past: The Integrated Industrial Economy 21

The Present: The Disaggregated Modern Economy 24

The Future? The Interrelated Open Economy 36

Conclusion 41

Chapter 3 Reengineering the IP Ecosystem 45
By Kevin Rivette

Perspective 45

Strategy Before Tactics 46

Ecosystem ReengineeringWhat Is It? 47

Profit Pool Positioning: Show Me the Money 47

Advantaged Networks: Whom Do I Want to Play With? 50

Collaborative Innovation: How to Avoid Looking Over Your R&D Shoulder 54

Chapter 4 IP Investing: Catalyst for Return or Recipe for Pain? 57
By Bruce Berman

Perspective 57

Agreeing to Disagree 58

IP Comes in Many Shapes and Sizes, So Does IP Value 61

Fewer than 5% of Patents Are Assets 63

Diverse Patent Holder Motives and Expectations 68

IP in Context: Toward a Broader Interpretation of ROIP 72

The CEO Challenge: Recognizing and Maximizing IP Assets 75

Chapter 5 Making Sense of Recent Trends, Court Decisions, and Attempts at Patent Reform 81
By Irving Rappaport

Perspective 81

Too Much Litigation, Too Many Big Awards 82

Patent Competition 82

Myths Fostered by Those Claiming the Patent System Must Change 85

Emerging New IP-Based Business Models 86

Recent Supreme Court Decisions Impact on Business 93

Patent Reform Legislation 93

Conclusions 98

Part two IP Performance 103

Chapter 6 Patent Valuation Contexts: Navigating Murky Waters 105
By James D. Woods

Perspective 105

Sounding the Shoals, Plumbing the Depths 106

Valuation Techniques 108

Sources of Value 113

Practical Application 121

Chapter 7 Measuring and Conveying IP Value in the Global Enterprise 125
By Joe Beyers

Perspective 125

Introduction 126

Strategic Intent of IPA Changing Role 127

Structuring for SuccessIt Sounds Good but How Do You Get Everyone on Board? 129

Leveraging IP for Increased Valuebut What Kind of Value? 130

IP Cash/ValueWho Gets the Benefit? 132

Revenue RecognitionSo You Get the Cash, but Can You Count It? 132

Specific Business ModelsWhat Are Reasonable Financial Goals? 135

TradeoffsSetting the Goals and Measures of Success 137

Summary 139

Chapter 8 Strategic Patents and Return On Investment 141
By Willy Shih

Perspective 141

With Patents, Cash is Not Necessarily King 142

Valuing a Patent versus Valuing a Technology 142

Strategic Use of Patent Portfolios 149

Is R&D Solely for the Purpose of Generating Patents a Sustainable Business Model? 151

Thinking Strategically about Patents 152

How Does a Firm Know if Its Patent Strategy Is Successful? 157

Chapter 9 Patent Litigation: The Changing Economics of Risk& Return 161
By Ronald J. Schutz

Perspective 161

The Only Constant is Change 162

The Rules of the Game Have Changed 163

The Rules May Change More 164

Risk/Reward Analysis 165

Patent Litigation Is More Expensive 165

Risk/Reward from The Patent Owners Perspective 166

Risk/Reward Analysis from The Alleged Infringers Perspective 169

Other Factors that All Parties Need to Consider 170

A Report from The Trenches 171

Conclusion 173

Chapter 10 Making Reputation Pay: Intellectual Assets Impact on Shareholder Value 175
By Jonathan Low

Perspective 175

The Reemergence of Reputation 176

Intellectual Property as a Global Differentiator 179

Intangibly Denominated Objectives 180

Refining Techniques for Quantifying Reputation 181

Keeping Brand Promises 183

New Measurement Rigor 184

Making Informed Decisions 188

Part three IP Transactions 191

Chapter 11 IP Asset Sales, Still A Work in Progress 193
By James E. Malackowski

Perspective 193

From Technology Transfer to Title Transfer 194

A Tradition of Patent Licensing 196

Emergence of New IP Marketplaces 197

IP Assets: Tomorrows Currency 203

Conclusion 211

Chapter 12 The Evolving Role of IP in M&A: From Deal-Breaker to Deal-Maker 215
By Ron Laurie

Perspective 215

Not Just a Bundle of Rights 216

First Generation M&A Mindset: IP as a Deal-Breaker 217

Second Generation M&A MindsetSeeing IP as a Deal Driver 221

Remaining Impediments to Fully integrating IP Value Analysis into M&A TransactionsAnd Possible Solutions 223

The Role of the CIPO in Early-Stage M&A Activity 226

The Role of the IP Investment Banker in Extracting Maximum Value from Transactions 227

Conclusion 231

Chapter 13 Patents-as-Hedge: Wall Streets Emerging Monetization Model 233
By John A. Squires

Perspective 233

Valuing Risk Management 234

Attributes of Patents Wall Street Seeks to Procure 238

Innovation for Consortia and Joint Ventures in Market Structures 244

Role of Patents in Market Structure Joint Ventures 249

Patent Valuation and Implications for Use of Patents Moving Forward 250

Chapter 14 Financing IP AssetsWhat Lenders and Investors are Missing 255
By Keith Bergelt

Perspective 255

Financial Capital Available to IP Holders 256

Putting the Subprime Credit Crisis into an 257

IP Perspective

IP Finance 261

IP Finance Landscape 266

Conclusion 271

Chapter 15 Assets, Property and Capital in a Globalized Intellectual Value Chain 275
By Ulf Petrusson and Bowman J. Heiden

Perspective 275

(Re)defining Intellectual Assets, Property, and Capital 276

The Transformation of Industry to Knowledge- Based Business 280

Knowledge-Based Business Models 283

The Road Ahead 290

Index 293