Intellectual Property Management

Though from the beginning James' career was oriented toward products for which technical innovation was the core source of value, it was not until working on the Windows Printing System did he personally see a clear demonstration of the strategic value of patents -- he was impressed that a single patent application covering UI uses of two-way PC/peripherals communication could be significant in the negotiation of significant licensing deals.

In subsequent Microsoft, client, and personal projects he has been responsible for analyzing innovations and managing the development of patent portfolios. This does not include actual legal work, which he happily leaves to qualified attorneys. He has however made a study of the creation and use of patents and believes in some axioms including:

  1. Valuable portfolios require the deliberate synthesis of legal, business, and technology perspectives.
  2. Efficient portfolio development typically requires only modest changes to common daily technology development practices once #1 is made clear.
  3. Patents are neither mysterious nor a goal. They are best thought of as one of the mechanisms that when appropriate and well managed can generate significant value from innovation.

For more on these and other assertions refer to James' Excelsior Bonifico Company web site, or some of his recent presentations:

Title Date & Length Program Host
Patent Relationships Jan 17, 2008
2 hours
Intellectual Property Management Certification University of Washington, Extension Department
The Deal: Valuation and Negotiation March 4-5, 2008
12 hours
Fundamentals of Intellectual Asset Management, Professional Development Series Licensing Executives Society, National Chapter
Strategic Planning & Efficient Patent Management April 4, 2008
45 minutes
Patent Workshop Licensing Executives Society, Vancouver Chapter
Managing Patent Creation April 24, 2008
3 hours
Intellectual Property Management Certification University of Washington, Extension Department
Patent Management May 1, 2008
3 hours
Intellectual Property Management Certification University of Washington, Extension Department
Product Positioning Oct 30, 2008
35 min Video
From Invention to Start-Up University of Washington's Center for Innovation and Entrepreneurship, the Applied Physics Laboratory, and UW TechTransfer

Inventor Workshops

James has developed a range of workshops for scientists, engineers, and business development managers. The workshops are typically oriented to specific business goals, such as managing costs, capitalizing on research, or designing products to avoid blocking patents. For details see the Training section in Excelsior Bonifico Company.

This is some of his favorite work, as both the economic benefits of aligning patent rights to product features and the increased skill in patent right use by engineers are often quickly apparent. Also he is a bit of a ham.

Here are a couple of decks used for introductory talks:

Patents from the Outside

Patents from the Inside

 Projects

 

                                  Benefits

 

 

 

Cost

Efficiency

Entertainment

 



Technologies

Algorithm

 



Licensing Claims

Molecule

 

Configuration

 

Biz Method

 

 

 

 

      Defensive Claims