About the Editor xix
Introduction xxi
Part one IP Business Models 1
Chapter 1 Out of Alignment â"Getting IP and Business Strategies Back in Sync 3
By Dan McCurdy
Perspective 3
The CEOâs 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 Companyâs Intellectual Property to Improve Business Performance 13
Not Magic â"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 âOpenâ Economy 36
Conclusion 41
Chapter 3 Reengineering the IP Ecosystem 45
By Kevin Rivette
Perspective 45
Strategy Before Tactics 46
Ecosystem Reengineeringâ"What Is It? 47
Profit Pool Positioning: âShow Me the Moneyâ 47
Advantaged Networks: âWhom Do I Want to Play With?â 50
Collaborative Innovation: âHow to Avoid Looking Over Your R&D Shoulderâ 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 Decisionsâ 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 IPâ"A Changing Role 127
Structuring for Successâ"It Sounds Good but How Do You Get Everyone on Board? 129
Leveraging IP for Increased Valueâ"but What Kind of Value? 130
IP Cash/Valueâ"Who Gets the Benefit? 132
Revenue Recognitionâ"So You Get the Cash, but Can You Count It? 132
Specific Business Modelsâ"What Are Reasonable Financial Goals? 135
Tradeoffsâ"Setting 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 Ownerâs Perspective 166
Risk/Reward Analysis from The Alleged Infringerâs 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 Assetsâ 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: Tomorrowâs 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 Mindsetâ"Seeing IP as a Deal Driver 221
Remaining Impediments to Fully integrating IP Value Analysis into M&A Transactionsâ"And 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 Streetâs 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 Assetsâ"What 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
