Thursday, May 5, 2011

Northeast Wisconsin Innovation Event: NEW END

Hundreds of Wisconsin entrepreneurs will attend NEW END:

One day event for start-up businesses to focus on creativity and networking

On Wednesday, June 22, 2011, hundreds of entrepreneurs will join together in a one day event to celebrate innovation and job creation in the "New North" of Wisconsin. Northeast Wisconsin Entrepreneur Networking Day—or NEW END—takes place at Fox Valley Technical College, Appleton, WI. The event is dedicated to the specific needs of entrepreneurs and small business owners by packing networking, education, and collaboration into one day.

This is the seventh year for the influential business meeting which has been attended by hundreds of entrepreneurs annually. NEW END features nationally known author, speaker and entrepreneur, Barry Moltz, who will conduct a workshop specifically designed to get business “un-stuck.” Moltz has been a featured speaker at NEW END in the past, but this year’s event will provide more one-on-one learning with Moltz.

“Entrepreneurs are not used to taking the easy path,” Moltz said. “But when they get stuck either in an existing business or a new venture, sometimes they just need to change perspective—that’s what this workshop will do,” Moltz said.

NEW END is sponsored by the FVTC Venture Center, the leading entrepreneur center in Northeast Wisconsin. In the last five years. The Venture Center has helped launch more than 200 businesses through the E-seed and Pro-Seed programs. Executive Director Amy Pietsch says this event is not only popular with entrepreneurs, but is a critical element of their business plan.

“For years, one of the most popular events at NEW END has been the ability to network in person with other entrepreneurs and business resources,” Pietsch said. “Entrepreneurs who attend will connect with the people and information they need to be successful.”

New for NEW END 2011, the “Pop-up-Pitch.” Entrepreneurs may register to be part of this competition in which they could win $2500 by telling a panel of judges in only 60-seconds who they are, what their business is, and how they will use the $2500 to advance their enterprise. Entrepreneurs are encouraged to come prepared for the “Pop-up-Pitch”. A limited number of registrants will be presenting their ideas in front of the entire NEW END conference and are urged to register early.

“Start-ups are constantly pitching their business idea to investors, partners or lending institutions,” Pietsch said. This is a fresh, creative way for them to hone their pitch into a short, specific message.”

In addition to the Pop-up-Pitch, NEW END 2011 will feature:
  • Day long workshop with Barry Moltz
  • Afternoon Networking session with business owners and other entrepreneurs
  • Taste of Entrepreneurship featuring area food entrepreneurs and their finest fare

Cost for the day-long workshop with Barry Moltz is $100/person; attendance is limited. Cost for the evening NEW END networking, Pop-up-Pitch and Taste of Entrepreneurship event is $39/person. To register, please visit or

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Barry Moltz is available via phone for personal interviews. Visit his website for more information

The Venture Center can provide interviews with regional entrepreneurs who have been involved in NEW END.

For more information, contact Mary Schmidt, mkschmidt at, 920-284-7165

Friday, April 22, 2011

More Dangers of the Patent Reform Bill Identified

Sometimes doing nothing isn't such a bad thing. Our patent system could use a few fixes, but not the kind Congress is now pursuing. Folks, if Congress or the Administration really wanted to fix the patent system to BENEFIT innovators and advance the cause of the useful arts, they would NOT imposes a $100 million tax on patent seekers by diverting the money they pay in fees to the USPTO to feed their big spending habits in unrelated sectors. That's right: the inefficiencies and costly delays in our patent system are due, at least in part, to Congress taking away the money that the USPTO receives from inventors. It's a tax on innovation, a ridiculous innovation fatigue factor. Let the USPTO keep and spend the money it receives to advance patent searching and prosecution. Tax tobacco, not innovation and innovators. Our economic recovery needs more innovation, not less.

Now the same group who doesn't mind taxing innovators and adding to the delays at the USPTO have offered "patent reform" to "fix" our patent problems. Sounds great, right? Good intentions, no doubt. But as we warn repeatedly in Conquering Innovation Fatigue, there can be unintended innovation fatigue factors rising even from well-intended actions if policy makers aren't listening to the voice of the innovator. That's the voice of the innovator, not the voice of the largest campaign donors. They might do OK with the reforms being pushed through Congress. It's lone inventors and small companies I'm most worried about. You should be, too.

David Boundy offers a summary of the problems with the patent reform legislation over at Patent Docs. I agree with much of his analysis. From my work in the innovation community, I've seen that the year grace period inventors have in the U.S. from public disclosure to filing a patent really is valuable for lone inventors and small companies, and eliminating it will greatly increase costs and risks. It could be a crushing blow for some.

Read David's article. I look forward to your comments, there or here.

Friday, April 15, 2011

Intellectual Assey Strategy That Leads Innovation

The primary problem with most IP management efforts is that they are reactive only. These systems typically focus on incoming invention disclosures and existing patent applications, leading to recommendations on which disclosures to file, which countries to file in, and which existing applications to abandon for cost control. These are vital components for intellectual asset (IA) management, but they fall short in providing strategy that can inform prospective inventors about what kind of inventions are needed.

Effective IA management begins not with the processing of existing documents, but with the development and articulation of vision to guide the process of IA generation and acquisition. It begins with a roadmap of what the corporation needs to own and protect, and that roadmap can then be infused into a written IA strategy statement that guides the IA-generating community to know what they need to create, and also guides IA committees to know what they should be approving.

Written strategy statements can help innovators be more successful and decision makers more disciplined, though there must also be leeway for out-of-the-strategy-box inventions that could lead to unexpected opportunities. However, most IA generating work in a corporation can and should be targeted and focused on specific objectives.

Once a clear vision is communicated regarding the IA needs of the corporation, IA generating activities can be used to supplement normal new product development and R&D. These exercises can be driven by the IA management team to achieve low-cost IA estates in targeted areas for specific objectives, such as averting a disruptive threat, laying a foundation for future IP in a potentially disruptive area where R&D investment is not yet available, weakening the IP potential of a competitive merger or acquisition, etc. At least a portion of the IA generating efforts of a corporation should be driven from the top with a clear objective in mind, rather than waiting for random invention disclosures to trickle up during the course of normal R&D activities. IA strategy should lead innovation.

Monday, April 11, 2011

Conducting Innovation Sessions to Generate IP: Preparation is the Key

At Innovationedge, one of my favorite activities is working with a team in what we call an "Edge Session" to create new intellectual assets. It's not not brain storming, where a flood of bad ideas are welcome, but an iterative process in which the goal is enabled, good concepts that are fleshed out enough to support drafting of a meaningful invention disclosures. A key part of the Edge Session is refining problem statements, moving from broad, vague questions to more specific problem statements that guide inventors on what is needed. We introduce stimulus elements that are coupled with the problem statements to stimulate thinking. The stimulus elements can be used in addressing a problem directly or as associative thinking tools to change the way people look at the problem--all part of the steps along the way to creating records of an enabled invention that, in turn, can readily support IP generation such as drafting a patent application, documenting a trade secret, or preparing a defensive publication.

Preparation has been the key for success. A big part of the preparation is ours as we dig into the literature, patents, and competitive intelligence. Sometimes we conduct pre-workshop interviews to get a landscape of what the client already knows so that we can better begin with that starting point as we help them create and document more.

The preparation by the client is also critical. One key part of their preparation is the selection of team members. Groups of about 5 to 25 people work well, with maybe 7 to 15 being the preferred range. The group works well if there is sufficient diversity in experience and background. For example, even in dealing with highly technical problems, I like to have at least one marketer in the team, someone with great hands-on experience dealing with consumer insights or other sources of marketing information. The perspective a good marketing person can bring is often vital for the success of an IP-generation project.

Teams also can be more effective when the prepare by reading the materials we provide on the prior art, competitive efforts, etc. We recognize, though, that many times team members won't have had adequate time or motivation to prepare other than showing up. We can still squeeze good information from the unprepared, for much of what they have to contribute creatively is already in their heads. It just may take a little more effort to get it out and documented,

Tuesday, March 22, 2011

Chemical Patent Practice: Resources for Drafting Chemical Patents

Chemical patents pose a number of unique challenges. Many times significant additional work is needed to help the inventor understand the scope of the invention. A successful reaction with a few chemistries could lead to a narrow chemical patent limited to the reactions pursued if the drafter of the patent doesn't appreciate the big picture in which the chemical species examined are members of a much larger genus. Providing a reasonable generic description of a chemistry that does not become overly speculative and unpredictable (as in not enabled) while still providing useful coverage for the inventor is a complex task requiring searching and good knowledge of chemistry.

One of the best IP courses I took was Chemical Patent Practice from Patent Resources Group. The course notes were extensive and thorough in terms of case law, but not, of course, in the chemistry itself. I still recommend PRG's courses, though they are expensive.

Other resources to consider include:
I list a few of my own chemical patents on my biographical information page.

Wednesday, February 9, 2011

Dangers of "First to File" in Proposed Patent Reform Legislation: Kudos to Dr. Ron D. Katznelson

In "Will first-to-invent always frustrate patent reform?," Dr. Ron D. Katznelson offers an important perspective about the dangers of proposed first-to-file systems in pending US patent reform legislation. He argues that the real agenda of its proponents will be to ultimately include prior user rights in the patent system that will replace the public covenant of the patent with rewards for not publishing knowledge, jeopardizing the value of patents altogether--and the march of progress through public disclosure.
The problem with PUR lies in a perilous deviation from the basic exchange that takes place under the patent bargain -- in exchange for making a new, novel invention public, the government grants the inventor a limited exclusivity over the invention for a fixed period of time. Upon invention, the inventor has three basic options to consider: 1) participate in the patent system’s quid pro quo, teaching and sharing the invention with the public, 2) forgo patent rights, but simply publish the invention (called "defensive publishing") so that others will learn about the technology, thereby creating prior art so that others cannot patent the idea, or 3) keep the invention secret, but risk someone else inventing a similar invention and obtaining patent protection and the exclusive rights that come with it, creating a disincentive for keeping inventions secret.

PUR as contemplated by the FTF proponents would fundamentally alter this dynamic as it would allow an accused infringer to demonstrate their prior use of the patented technology to avoid infringement of a subsequently patented invention, even if the accused had not disclosed the invention to the public. It would transfer enormous risks to those who participate in the patent system from those who do not (for there would be no way of knowing who was hoarding what secrets and where). It would fundamentally shift the "reward" from those who make their inventions public to those who keep their ideas secret. The patent bargain would be broken, as no exclusivity would be assured in exchange for disclosure by the patentee.

Arguments of "fairness" to those who make substantial investments in secret are simply a non sequitur. Means for achieving fairness have already been established by society’s acceptance of the patent bargain. One cannot have it both ways.

In essence, PUR would make prior use akin to prior art -- equating, wholly illogically, a secret with a public good. And worse, proponents of PUR actually want (and have tried pushing for) PUR to go further -- considering it as prior art in validity analysis of the patent. Doing so would allow the secret to be used not only to avoid infringement, but to summarily invalidate an otherwise properly granted patent! This would allow private and secret prior use to destroy a public patent right -- and eliminate the patent holder’s rights to that patent not only with respect to the prior user, but with respect to the rest of the world.

Read the whole article. Good points. Kudos also to Greg Aharonian who shared the essay in his outstanding PatNews newsletter today.

Tuesday, February 8, 2011

Due Diligence for Licensing Outside Technologies

Open innovation often leads to licensing external technologies. In-licensing is fraught with pitfalls, many of which can be avoided without too much pain if good diligence is done up front. How do you know if the partner you are looking at really has something of value that they can license to you? How do you know they are for real and can be trusted? There is always risk, but due diligence can help contain the risks and lead to moving forward with more confidence.

Joshua B. Goldberg of The Nath Law Group offers a useful summary of important steps for due diligence. "An Introduction to Intellectual Property Issues Associated With the In-Licensing Due Diligence Process" on the LES (Licensing Executives Society) website lists some of the basic documents that will be needed early in this process:
Documents You Should Expect to See
The first step in conducting a complete due diligence analysis is obtaining all necessary documents from your potential licensing partner. The critical documents you should want to see include any patent and patent application files; all supporting documentation (e.g., Assignments); any previously executed agreements (such as licensing, material transfer, consulting, research and development, manufacturing, and/or key employee agreements); laboratory notebooks; scientific publications by inventors/employees; SEC documents; and the results of any previous prior art searches.
You may also wish to explore public documents showing litigation, bad press, or other problems your prospective partner has faced. Word of mouth input from those who have done business with the company can also help. Character matters, and sometimes (not always), reputation is a reflection of that.

After conducting searches to assess freedom to operate and patent validity, there is still more that should be pursued. Joshua also makes these wise recommendations:
Looking for Others Who May Have Rights to the Technology
Another important area to look at is whether the potential licensor has had any previously terminated relationships. Any such relationships should be closely scrutinized, as the previous partner may still own residual rights and obligations, or may possess unexercised options to the technology. In addition, any patent applications filed after the previous agreement was first executed may be in question, as there may be issues concerning the source of any data, and whether the proper owners and/or inventors have been named. Lastly, you may want to look into why the previous relationship is terminated before you enter into an agreement with the licensor. After all, it is good to know who you are "marrying"!

Another important issue to investigate is whether the invention arose from a university. If the company you are talking with is a university spin-off, there may be some uncertainty or disagreement between the university and the spin-off as to who owns all of the patent rights. This is an important issue to resolve early on; otherwise you may just be buying another headache.
As you move forward, make sure you have considered a wide variety of scenarios, such as the company being acquired, being sued, going bankrupt, spinning off a unit, going global, losing the management team you have worked with, having patents or claims ruled invalid, etc. Standard terms may address all these issues, but run through these scenarios and make sure the agreement is adequate. However, avoid getting the agreement bogged down to explicitly cover numerous scenarios unless you don't mind taking forever to get the agreement through. Ultimately, it's about trust. If you can't trust the partner, don't work with them. But even trusted partners change as people change positions or outside forces change companies, so yes, you need a flexible agreement to mitigate some of these risks.

Prior art searching is one of the painful parts of due diligence. It's painful because it requires a lot of heavy lifting and never comes to a sure conclusion: there is always risk that you are missing the most important art, or that your interpretation of the art won't match that of a future judge or jury. Then there is the risk the patents of interest will be found invalid due to shifts in judicial whims that are impossible to predict. What is clear and definite today may be vague and indefinite tomorrow, or may not even be patentable subject matter after the next round of judges ruminates over the metaphysics of terms like "abstract" in patent law. We have to live with that risk all the time as we move ahead to take advantage of IP opportunities the best we can.

Saturday, January 8, 2011

Unwise Shortcuts in Patent Preparation: Don't Trust "Cheap" Provisional or Utility Applicationis

One of my favorite blogs, IPwatchdog, has a new post on the costs of patent preparation: "Patent Application Costs: You Get What You Pay For." Well, you may not always get what you pay for, but you certainly aren't going to get what you don't pay for, unless you are working with very generous IP professionals.

Gene Quinn says this about the cost of preparing a patent:
[Y]you have probably seen the ads on the Internet where a patent attorney or patent agent proclaim that they can prepare and file a U.S. nonprovisional patent application for some ridiculously low price, perhaps as low as $1,400. It is my opinion that there is no legitimate way to adequately prepare and file a nonprovisional patent application for $1,400. In fact, the lowest quotes we typically provide are for between $6,000 to $8,000 plus the filing fees and costs of drawings.... So why the great disparity? The first thing to understand is that like everything else in life, you get what you pay for. There is just no way to escape that economic reality.
At Innovationedge, we've done some non-provisional patents for much lower than $6k--when we are interested in taking the invention to corporations we work with for potential licensing or for other sound business reasons. Then it's in our interest to help the client get a strong patent and we're willing to put in a lot of extra effort at low cost to create intellectual assets that we think will lead to licensing success. But the many people who walk in and ask us to do a quick and dirty provisional on the cheap are usually sent away disappointed because I'm not willing to cheat them with a provisional that doesn't actually protect them.

We've had some real heartbreaking moments when a client showed us their cheap $1500 or even $4000 provisional application that was just three or four pages long and barely even described the invention. We've seen companies telling their investors that they had thorough IP for their new product when it was provisional garbage. The false security created by a bad provisional application can lead people to disclose their invention and lose rights thinking they have a priority date when the cheap document they have put their trust in may not even come close to an enabling disclosure.

We do provisional applications all the time, but I generally prefer to craft each one as if it were a utility application, ready to file as such with a full set of claims. I prefer to do a detailed search, then draft a detailed description with many alternative embodiments, considerations of how the invention will be used, recycled, marketed, etc., with implications across the supply chain, with regulatory considerations, etc., as needed to give broad enablement and to provide details and verbiage that can help respond to many unexpected twists and turns in prosecution. Especially for the utility application, a lot of work is required to come up with a reasonable strategy in claim construction and to build in the support disclosure. While our rates are low compared to many, the final cost is not going to be $1500.

If the cost of a good patent is too much, don't patent it. Trying to patent something for next to nothing will usually just give you nothing and waste your money in the end. It may feel good to have a patent filed, but if it is actually worthless, you have nothings (except, perhaps, the benefit of having taught the rest of the world something about your invention, such as how to make it).