AIPPI Congress Report 6: The business of IP – venturing with IP

The IPKat's view of venturing extends as far as the bottom
of his lawn

The AmeriKat has just flown from Sydney to Washington D.C. for the ChIPs Annual Global Summit.  After a mere four days down under she has no idea what time zone her body is on and if her brain will ever catch up.  What she does know is that AusKat James Ellsmore has prepared a report from the IP ventures panel at this year's AIPPI Congress where speakers examined the role and importance of IP as an intangible asset for raising capital and driving innovation.  James reports:

"The fundamental message of the first two panelists was that attorneys and lawyers advising businesses and investors have a duty to educate those businesses and investors about both the intangible value of intellectual property rights, and the legal frameworks within which businesses and investors want to do business.  The third panellist's presentation also challenged those advising businesses and investors on IP strategy to think differently about the value IP has within a business.  The third panelist's fundamental message was that venturing with IP should not be thought of as limited to simply ring fencing and then monetising IP assets.  Instead, businesses should be thinking more broadly about non-traditional ways to venture with their IP assets in ways that align with the broader strategy of the enterprise.  

The first speaker on the panel was David Postolski, a US patent and IP attorney and partner of Gearhart Law.  David, who works with start-ups, entrepreneurs and incubators and accelerators, gave an overview of how and why the economics of innovation are changing in the US and abroad.  David explained that IP assets, particularly patents and trade marks, are being pledged as collateral for secured financing at all stages of the innovation cycle.  David’s key message to attendees was one of education.  David explained that as attorneys and lawyers, attendees must educate businesses and investors on the importance and value of their IP.  Hand-in-hand with the need for education, David’s presentation also highlighted the need for international harmonisation of IP laws and why harmonisation would particularly assist start-ups and entrepreneurs to navigate the different IP systems of each country and secure funding at earlier stages of the investment lifecycle.

Echoing David’s key message of education, the panel’s second speaker – Tim Heberden, Director of IP Economics at Glasshouse Advisory – also spoke of the need to articulate the value of IP as an intangible asset in the course of his presentation on IP valuation practices and standards.  Tim emphasised that investors are often not IP savvy and that it is incumbent on practitioners to articulate the commercial strength and value of a business’ IP.  Tim explained that this educational piece is a complex one – whilst IP valuation is not a ‘dark art’, not all intangible assets are equal and critical analysis requiring multi-disciplinary inputs is required to develop a robust view of the value of a business’ IP assets.

 The panel’s final speaker, Jane Perrier took the discussion in a new direction by articulating the value of IP as an intangible to reach a strategic, as opposed to a monetary, outcome.  Jane is Special Counsel, Technology, Innovation and IP for Telstra (Australia’s leading telecommunications and technology company), and in this instance, Jane spoke passionately of Telstra’s efforts to align IP strategy with business strategy and to explore new IP ventures as a means of demonstrating enterprise innovation and supporting Telstra’s strategic innovation goals.  Jane explained that traditionally, a business would wish to ring fence and then monetise its rights.  Jane spoke of the need to consider non-traditional approaches to exploiting IP and explained that sometimes it might not be in the business’ interest to take the more familiar, traditional approach.  Jane reiterated that it is critical that IP strategy align with business strategy and that at the end of the day, IP strategy should support business outcomes.  Jane articulated why this can be of great value to an enterprise like Telstra despite the fact that such non-traditional ventures may not provide any direct monetary value to the business. In the end, regardless of whether one wishes to monetise IP assets or instead wishes to look at non-traditional ways to exploit those assets, it is a case of ‘nothing ventured, nothing gained’."