Chief Intellectual Property Officer (Acting)
Successfully helped the client identify current and strategic patent portfolio needs, and oversaw the prosecution of patents.
Functioned as a go-between, using my business and intellectual property knowledge to provide business insights to patent counsel while providing patent insights to executives. This closed the all-too-frequent communication gap between patent attorneys and business executives.
Key responsibilities included the following:
• Day-to-day monitoring of strategic portfolio assets
• Developing those assets through ideation in conjunction with engineers and attorneys
• Reviewing patent applications in their entirety
• Editing and writing core parts of specifications and contributing additional claims
• Helping to negotiate and/or settle disputes among various parties which had arisen previously
• Advising on naming and trademark matters
Branded and Positioned a Commercial Construction Firm
Developed complete brand, messaging, look and communications for a geographically-focused and industry-focused firm.
The project was a challenge because commercial construction by itself is hard to differentiate. In this case, the geographic area was limited, but certain characteristics of the market (expanding rapidly, prevalent oil and gas entrepreneurs) were highly relevant.
The functional method of construction became very important, as I discovered that quality, build, and other assurances could not be achieved with processes used by competitive firms in the area. Last, the founder's specialization and personal background lent authenticity and credibility to the brand story, as well as extolling and exemplifying the company's values.
Marketed Software IP and Negotiated the Transaction
Took about-to-expire intellectual property from a distressed software firm, and sold it well above-market for millions.
An extremely complex project that involved understanding storage, software and communication protocols at the link, network, and presentation levels of the ISO OSI model.
• Identified potentially infringing software, studied the technical details to put together detailed "claim charts" showing infringement
• Created detailed marketing documents making the technical, legal, and business case for acquisition
• Identified and pursued serious potential buyers
With a colleague, this led ultimately to the sale of the distressed assets for well over market value. A further complication was that the financial difficulties of the owning firm were so great that they were forced into Chapter 11 bankruptcy as part of our strategy to successfully sell the assets using a "Kodak" strategy (Kodak did the same thing). This required further court appearances for the benefit of our client, the hiring of additional counsel, and a number of complex negotiations with parties opposed to the sale.