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:

Valuable portfolios require the deliberate synthesis of legal, business, and technology perspectives.
Efficient portfolio development typically requires only modest changes to common daily technology development practices once #1 is made clear.
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	Ö		Ö	Licensing Claims
	Molecule		Ö	Ö
	Configuration	Ö	Ö
	Biz Method		Ö
		Defensive Claims