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Nanobiz LLC: Building Real Value in Your Intellectual Property

Wednesday, December 08, 2010

Charles Brumlik from Nanobiz LLC, a service provider at the marcus evans IP Law Summit Spring 2011, on maximizing the value of IP assets

IP Law Summit Spring 2011

Hollywood, FL -- IP Law Summit Spring 2011, HOLLYWOOD, Florida, March 24-26, Interview with: Charles Brumlik, Partner, Nanobiz LLC.

The real value of Intellectual property (IP) is captured by strategically applying additional non-patent resources, including the know-how within the organization, into the IP portfolio, says Charles Brumlik, Partner at Nanobiz LLC. Strategic integration between internal business development, technology and marketing functions is critical to maximizing the value of IP, he adds. From a service provider company attending the marcus evans IP Law Summit Spring 2011, in Hollywood, Florida, March 24-26, Brumlik offers his perspective of capitalizing on IP assets and making open source innovation a sustained success.

What is the best way to capitalize on intellectual property?

Charles Brumlik: “There is more IP being shared today, but fewer resources and less risk tolerance for actively marketing them. Some routine parts of IP management can be outsourced, but it goes beyond just trying to find a best fit for outsourcing. Significantly increased valuation comes from building an IP portfolio with the inclusion of the non-patented know-how within the organization, which can be even more valuable than the actual patent itself.

Instead of starting with the patent or its associated product(s), IP Counsel should start with the market, identifying where the hot opportunities are and look at what IP they have that can bring value to those segments. This is the opposite approach to what most IP Counsel take. The recommended approach requires working closely with departments, functions and divisions that IP Counsel have traditionally had only limited exposure to. Working hard and reading the patents have to be combined with institutional memory, the know-how and trade secrets within the organization. Many IP assets have diminished in value because the people who knew how to practice the invention left the company or moved on to the competition. To maximize the value of IP, personal interaction inside the company is critical.”

What defensive strategies would you recommend?

Charles Brumlik: “Offshoring of core IP functions, whether internally or externally, is a major issue today. In some countries sharing is an integral part of the culture. When companies offshore their key IP research to their divisions in India or China, they often find that information has also been shared with their competitors. Many of our clients are treating this as a black box, but it truly does not work that way. Our advice is to be highly vigilant, and visit in person to make sure that real safeguards are in place and actually practiced.

Many IP departments outsource some work to cut corners, but a happy medium can be found between the internal talent and the outsourced work; an extreme to either direction tends to diminish the value of IP.”

What is your outlook for the coming few years?

Charles Brumlik: “We see more reliance on shared IP; sharing patents and having contractual rights to IP outside of the company is becoming more common. Some of the portals we work with are building portfolios across multiple vendors and we definitely see that trend continuing. As managed in most companies today, open innovation does not work well. There is no motivation to put together a working package that can actually be commercialized within a reasonable time horizon. Whether it is done internally or outsourced, the multiple parts required to make open innovation work must be put together carefully to create synergistic strengths. Planning for true innovation requires effective cross-functional, cross-team approaches.”

Summit Website:

About Nanobiz

Nanobiz is a consulting firm with decades of experience in translating chemistry and materials into commercial products. We make Open Innovation work for our Fortune 100/1500 clients by combining business, IP, and technology. We leverage our cross-disciplinary industry veterans with an integrated search team, specialized tools, and a network of deep domain experts. Examples include forecasting chemical and materials markets, identifying and assembling IP portfolios for monetization, and identifying and comparing suitable partners.

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