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Making Innovation Pay. People Who Turn IP Into Shareholder Value

  • ID: 2212053
  • Book
  • March 2006
  • 224 Pages
  • John Wiley and Sons Ltd
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Praise For Making Innovation Pay: People Who Turn IP into Shareholder Value

"Bruce Berman has persuaded, arm–twisted, and otherwise cajoled today′s most successful patent practitioners into telling their stories and allowing him to tell theirs. Until now, no book has discussed innovation in so resolutely clear–eyed, personal, and practical business terms . . . [Making Innovation Pay] breaks new ground by giving voice to resourceful and articulate individuals who have the courage to brave new trails and the generosity to share how they do it."
Kevin Rivette, Vice President, IP Strategy, IBM Corporation

"Drawing upon an all–star lineup of IP thought leaders and practitioners, Bruce Berman, yet again, knocks the cover off the ball. Making Innovation Pay provides critical insight into both the art and the craftsmanship of those who successfully shape today′s IP landscape and are entrusted with developing tomorrow′s. Berman brings clarity, insight, and leadership to all those who find themselves willingly or not at the leading edge of IP issues in today′s economy."
John A. Squires, Chief Patent Counsel, Goldman, Sachs & Co.

"Innovation and enterprise distinguish the US from other nations. The contributors to Making Innovation Pay, diverse IP success stories, take us full circle with strong perspectives on invention and profit. Berman′s book is as much framed by a vision of American history as it is by business strategy, technology, or finance."
Hon. Q. Todd Dickinson, Vice President & Chief IP Counsel, General Electric Company; Under Secretary of Commerce and Commissioner of the US Patent and Trademark Office, 1998–2001

"Making Innovation Pay is a thoroughly enjoyable read brimming with fascinating insights from the stories of intellectual property asset innovators. Berman shines a spotlight on the lives of these IP pioneers, who you will recognize from the arrows in their backs and the roads less traveled."
Louis Berneman, former managing director, Center for Technology Transfer, University of Pennsylvania

"Bruce Berman is one of the first people to make intellectual property entertaining. Making Innovation Pay′s sharply focused essays by, and portraits of, the world′s best (and richest) IP business people, inventors, and lawyers must be read and savoured by anyone who values the importance of new ideas."
Ian Harvey, chairman, Intellectual Property Institute, LondonCEO, British Technology Group

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Foreword by Kevin Rivette, author of Rembrandts in the Attic.


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.


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Bruce Berman
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