Generally, it is up to an inventor to handle the business aspects of their patent rights. That is, patent attorneys deal with obtaining a patent for their clients; customers are supposed to make money from their patents. Once the patent is obtained, the patent attorney generally leaves the image in relation to those specific patent rights.

However, relatively few patents end up being valuable to a patent owner. This usually occurs because the customer’s business needs changed during the time the patent application was pending. Historically, these non-aligned patent rights were either ignored or lapsed because there was no market that would allow the patent owner to sell their unwanted patent rights. The unwanted patent, as well as the legal costs to obtain it, were considered sunk costs to the patent holder.

This is starting to change with the recent introduction of tech marketplaces posting technology needs sought by business innovation groups. The most notable are Innocentive.com and Yet2.com. Interestingly, I have seen a number of technologies on each of these websites that are possibly relevant to the patents I have obtained for clients over the years. While this could be a coincidence, I also think it could be a sign that more companies are diving into the open innovation space, rather than relying solely on in-house developed products or technologies.

As more companies announce their technological needs, there will undoubtedly be more opportunities for patent holders to get rid of their unwanted patent rights. Few patent holders will have the “bandwidth” or perspective to review these technology markets. So unless someone else makes the connection for them, opportunities to sell unwanted patents will likely have the ability to capitalize on these opportunities. I believe that patent attorneys can fill a need in this regard.

Patent attorneys seeking to improve the value they provide to clients would benefit from regularly reviewing the listings in these databases and disseminating information to their colleagues in the firm about the types of technology these technology markets are seeking. Imagine the delight clients would experience when their patent attorney provided them with the opportunity to make money on technology they no longer need, but have invested considerable resources in over the years. I can hear the client’s response now: “Do you mean my attorney is actually making me money instead of costing me money?”

One tip though. If the tech fix was obvious, the company advertising its need to the world probably wouldn’t have gone to the effort and expense to list it on tech marketplaces like Innocentive.com or Yet2.com. In fact, for it to be an acceptable solution, the idea is probably not just “out of the box” but “out of the truck the box came in”. An example of such a solution is found in the story of Magic Eraser(R).

The history of Magic Eraser is detailed in the Harvard Business Review article cited and linked below. In a relevant part, Magic Erasers included a BASF insulating melamine foam that was sold in Japan as a household sponge. A “technology explorer” saw the product in Japan and brought it to P&G for testing.

P&G introduced BASF foam directly to the US as a cleaning product, as well as participating in an ongoing collaborative research and development venture with BASF to improve the cleaning properties of melamine foam. The Magic Eraser brand has become a powerhouse for P&G and has spread to products beyond BASF foam. BASF has also benefited substantially from this effort in increasing sales of its melamine foam as well as developing a strong collaborative relationship with P&G.

The point of telling this story is that although BASF sold its insulating foam product in Japan for cleaning purposes, its business teams did not recognize that these same properties would be game-changers in the US market. Similarly, although P&G has one of the best cleaning R&D operations in the world, its scientific and commercial teams were unable to identify BASF foam as a potential option for its product offerings. It took someone who was in charge of exploring the technology – that is, working outside the usual internal corporate R&D silos – to make the connection between BASF’s foam and the huge US cleaning market.

Patent attorneys can serve as a kind of technology seeker for their clients. By preparing and drafting patent applications and conducting opinion work for their clients, patent attorneys develop a comprehensive understanding of the properties and functionality of their clients’ products and technologies. A patent attorney who reads the technology wish lists posted on technology marketplaces Innocentive.com and Yet2.com may be better able to make the connection between the desired properties of a technology and their clients’ patented technology that might solve those technological needs.

As the Magic Eraser story illustrates, a client working in the polymeric insulation space may not be “ready” to recognize opportunities in the home cleaning space, nor is a cleaning expert likely to be familiar with the ancillary properties of an insulating foam. A patent attorney can serve as a bridge to connect such disparate disciplines because they speak to clients across a variety of technology and business silos every day.

Of course, most clients will not want to pay their attorney’s hourly rate to serve as a tech scout. Such a service would certainly operate as an added value for most customers. However, as clients demand more from their patent attorneys and patent practice becomes more of a commodity, I believe that those attorneys who show their clients that they seek to create real value for their clients will generate more loyalty. from customers and face fewer cost kickbacks. .

“Connect and develop,“Larry Huston and Nabil Sakkab, Harvard Bus. Rev., March 2006.