Technology Deals

Wednesday, September 1, 2004 - 01:00

Reviewed by Al Driver. He was assisted by Ardin Marchetta, an intern and third year student at Lafayette College.Want To Use Your Intellectual Property To Best Advantage? Make Sure You Read This Book

Technology Deals is the much anticipated sequel to the classic works by Glazier Patent Strategies for Business, which invented the field of intellectual property management and is now in its third edition, and E-Patent Strategies. Unlike so many intellectual property texts, Technology Deals is an exciting read that successfully translates complex ideas into simple and understandable language. There is something in it for everyone who is involved with intellectual property - even those, who prior to reading the book, didn't think they were. The book provides interesting easy-to-understand case studies that illustrate how deals can go right - or wrong. Glazier then offers practical advice to prevent things from going wrong, and to fix deals gone bad.

The book is must reading for those who are the sole corporate counsel in a small company because they are made aware of issues that might otherwise not have troubled them. Since the intellectual property landscape is not only vast but in a constant state of change, even those who are intellectual property specialists in larger legal departments will benefit from Mr. Glazier's insights. Non-lawyers involved in business deals or in running a business, including management, directors and investors, will also benefit because the underlying theme of the book is how intellectual property can be managed to enhance shareholder value.

Because a broad spectrum of companies now view their patent portfolios as a source of shareholder value, the book focuses on using intellectual property rights to enhance a company's value. For example, in Case Study 6 entitled Patent What You Sell, Sell What You Patent, Glazier offers an example of how a company that does not have patents on its products can make itself attractive to those who might wish to buy the company. He suggests that improvements be made to current products that are in the public domain and that these improvements be patented.

Many of the case studies illustrate pitfalls to be avoided. One concerns software that is written and serviced by consultants. For example, an off-the-shelf system may have to be customized to meet your needs or you ask a consultant to write software that implements a new idea that your company developed. Questions often arise about who owns the intellectual property that these consultants create. Glazier cautions companies to carefully read the agreements provided by software consultants to be sure that they do not retain the right to patent the software. He also advises that companies patent their idea before soliciting RFPs from software consultants who may attempt to patent the idea revealed in the RFP.

The case studies presented by the author also deserve the attention of corporate counsel because they are relevant to intellectual property due diligence. Technology due diligence can make or break a deal and new categories of companies are becoming important players in the patent world. The author points out that in the United States, it has now been well established that software developments are patentable. Even software-enabled financial services are patentable. He notes that we have at least two new industries, financial services (including banks, securities brokerages, insurance companies, savings and loans, asset managers, program traders, mutual fund managers, and others) and telecom service providers (as opposed to telecom equipment manufacturers) that are actively using patents to protect their software-enabled services.

Stephen Glazier practices law in Washington, DC at Kirkpatrick & Lockhart LLP. He earned a B.S. and an M.S. from M.I.T. and a J.D. from the University of Texas. He is a member of the bar in New York, California, Texas, and the District of Columbia, and is a registered patent attorney with the U.S. Patent and Trademark Office.

Mr. Glazier's practice includes such areas as intellectual property, M&A for technology, patent procurement, licensing, patent due diligence for investment, financing of technology companies, patent litigation and demand letters, and related business transactions. His clients cover a wide variety of businesses, including those involved in financial services, Internet, e-commerce, software, and telecom space. He often consults on the development and commercialization of new technology and business plans, and on trends and strategies in patent asset management. Mr. Glazier lectures frequently on legal and business topics, and is a contributor on legal subjects to the editorial page of The Wall Street Journal and other publications.

Technology Deals can be obtained by going to www.amazon.com, www.barnesandnoble.com, and www.booksamillion.com.