Making Innovation Pay

BRUCE BERMAN is President of Brody Berman Associates, Inc. in New York, a management consulting and communications firm that works closely with innovation-based businesses, investors and assets. Bruce has implemented marketing and business development programs on behalf of more than 200 businesses and IP owners worldwide. He is editor and contributing author of Hidden Value: Profiting from the Intellectual Property Economy and From Ideas to Assets: Investing Wisely in Intellectual Property (Wiley), which has been translated into Japanese.

• Acknowledgments. Foreword by Kevin Rivette, author of Rembrandts in the Attic.Introduction.Chapter 1. Roadblocks and Building Blocks (B. Berman).Worthy Opponents.Distinguishing Patent Trolls from Independent Asserters.High-Stakes Poker.A Double Standard for IP Assets.Tolls,Trolls, and U-Turns.Chapter 2. Turning a Patent Portfolio Into a Profit Center (M. Phelps).Prof ile: Hail to the Chief IP Of f icer.ThinkPad®: The Licensing Story.A Virtuous Circle.Four Keys to an Ef fective Licensing Program.Innovative Uses for Innovation Rights.Chapter 3. Seeing Through the Illusion of Exclusion (D. McCurdy).Profile: Purveyor of Quality.IP on the Radar Screen.Gaining Competitive Advantage.IBM Leads the Way.Timing the License.Knowing WhatYou Have.Masterpieces Hang in Museums, Not in Attics.Emerging Models.Chapter 4. On Patent Trolls and Other Myths (A. Poltorak).Prof ile: Knight in Shining Armor.A Patent Is a Negative Right.Myth #1: “A patent is needed to practice the invention.”Myth #2: “It is not ‘nice’ to sue for patent infringement.”Myth #3: “The value of a patent is the same as the value of the patented technology.”Myth #4: “The patent system is fair.”Do Patent Trolls Really Exist?Myth #5: “A patent is a tax on innovation.”Chapter 5. Roadblocks, Toll Roads and Bridges: Using a Patent Portfolio Wisely (P. Detkin).Prof ile: From Trolls to Tolls.Shareholders Expect a Return on IP.Not All Patents Are Created Equal.Deploying Unrelated or Orphan Patents.Who Are the Buyers?A Seller’s Paradox.Chapter 6. Risky Business: Overlooking Patents as Financial Assets (J. Malackowski).Prof ile:Wunderkind.Director and Off icer Accountability.Patent Enforcement Litigation.Sarbanes-Oxley–Related Compliance.Shareholder Litigation.IP-Driven Shareholder Value.Performance Measurement.Director and Off icer Responsibility.Looking Ahead.Chapter 7. Who Benefits from Patent Enforcement? (R. Niro).Prof ile: Little Guys Like Him.A Patent Is Worthless Without a Remedy.When Inventors Fail, Innovation Suf fers.Inventors Must Consider Patent Enforcement.Patent Trolls and Harassment.The Role of Contingent-Fee Representation.Large Patentees Are Fighting Back.Breaking from the Pack.Dispelling the Troll Myth.The Danger of Not Enforcing.Leveling the Field.Chapter 8. Global IP in Crisis: Recognizing the Threat to Shareholder Value (B. Lehman).Prof ile: All Along the Watchtower.The Leadership Vacuum.The Top U.S. Patentees Are Not U.S. Companies.The Dangers of Uncertainty,Viagra® in China.An Action Plan.Managements Need to Step Up.Chapter 9. It Takes More than Being Right to Win a Patent Dispute (R. Schutz).Prof ile: Serious Competitor.Know Everything That Can Be Known.Juries Love a Good Story.Identifying Strong Patents.Good Guys and Bad Guys.Patent Disputes: Measuring Risk and Reward.Hedging the Risk.Chapter 10. Managing Innovation Assets as Business Assets (J. Beyers).Prof ile: Master Scout.Legal vs. Business-Led IP Perspectives.Elements of a Business-Led IP Model.How Patent Trolls Affect Prof its.The Nature of the Unfair Value That Patent Trolls Can Realize.What Operating Companies Can Do to Protect Themselves.Chapter 11. Secrets of the Trade: An Inventor Shares His Licensing Know-How (R. Katz).Prof ile: An American Original.The Business Model.Agreements and Fee Schedules.Ongoing Research and Notif ication Program.Litigation: Always a Last Resort.Defining Success.Index.

"The authors are telling us that IP Management is going through an evolution...this book provides a firm grounding in the issues...I strongly recommend it to NPD practitioners, consultants and senior managers." (The Journal of Product Innovation, September 2007) "I strongly recommend it to NPD practitioners, consultants, and senior managers." (Journal of Product Innovation Management; 9/07)"Informative and insightful. This edited compendium contains eleven chapters featuring easy-to-read contributions…. The book is laid out well, and it is a breezy read. Although the target audience is senior executives and managers in the world of business, the book is a very good collection for anyone interested in intellectual property… Worth the time, money and effort."—Professor Jay Kesan, J.D., Ph.D., U. of Illinois (Voiceless.com, October 4, 2006)"Timely and insightful essays from ten leading practitioners – eleven if you count Berman himself. The book addresses serious topics, like fiduciary duties and risk management, with far more credibility thatn any one author or practitioner could." (les Nouvelles, September 2006)"MIP is a must for senior management and a great resource for the IP practitioner. Thanks again, Bruce Berman, for putting IP management into a business perspective and maiking it more comprehensible to senior execuitves, professionals and managers alike." (les Nouvelles, September 2006)"As a 37 year patent practitioner, I found the first 50 pages of this book to be an eye-opener. It not only is worth the cost of the book, but in my view is worth the entire cost of the seminar for which it was offered as a preliminary read."—Dave Stallard, Wood, Herron & Evans, L.L.P."In his new book, Making Innovation Pay, Berman writes that patent owners have the same rights as property owners to protect and prosper from their assets, and he taps some of the most recognized IP gurus in the game to show companies how best to accomplish that." (Corporate Dealmaker, Mar-Apr 2006)