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Edison in the Boardroom: How Leading Companies Realize Value from Their Intellectual Assets

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Professor Thomas G. Field, Jr., Franklin Pierce Law Center

Few variables are more likely to dictate short- and long-term commercial success than a firm's ability to convert intellectual assets into intellectual property (IP). The smaller the firm, the bigger the need, and the need only grows.
Most companies are careful to avoid IP infringement and are eager to sue direct competitors who do not. Many firms also educate key employees on their roles in perfecting and protecting intangible assets. Fewer give full attention to IP and antecedents that might nevertheless be regarded as assets. For example, those who would not hesitate to monitor and sue infringing competitors may not monitor non-competitors as potential licensees.
To extract the most from intellectual assets, many factors, e.g., legal, technical marketing and sales, must be weighed. Edison in the Boardroom offers important advice to help firms take steps to meet that need. Despite its reference to "assets" in the subtitle, however, most of this book focuses more narrowly - on IP, and on patents specifically.
Davis and Harrison, said to bring "a quarter century of IP consulting accomplishments between them," document that some companies have long engaged in trying to optimize the value of their intellectual assets. The authors also assign companies to a five-level hierarchy based on a range of IP-management strategies. A goldmining metaphor is usefully advanced at one point to describe those levels as: defensive (staking claims), panning (cost control), mining (deeper profit seeking), processing (integration), and sculpting. The heart of the book consists of five chapters that discuss these levels seriatim and offers a host of useful ideas and anecdotes.
The book is generally well-structured. For example, early in each of the five core chapters is a description of what "companies are trying to accomplish" at the corresponding level of IP-management sophistication. At the defensive level, of course, companies have processes for seeking, maintaining and enforcing IP. Yet, in the discussion of second-level companies, said to seek to reduce costs by exercising judgment about what is brought into and kept in their patent portfolios, it becomes clear how much various levels overlap. The first two topics may usefully be segregated for purposes of discussion, but it is hard to imagine any company that can afford, literally, to pursue protection without attempting to balance portfolio goals against concomitant costs. Indeed, one thesis of the second chapter is that no firm can seek the strongest protection for everything of potential patentability, much less seek it in every possible country.
The third chapter diverges considerably. Companies featured there are said to seek, e.g., to extract portfolio value as quickly and cheaply as possible. Several have gone well beyond suing competitors or easily discovered, non-competing infringers. The most aggressive of such firms regard IP departments as profit centers and actively solicit licensees. Their success is sometimes remarkable. As the authors point out, "Worldwide revenues from patent licensing have grown from $15 billion in 1990 to over $100 billion in 2000." Echoing the central theme of another recent book, Davis and Harrison also point out that, "Some experts estimate that companies are sitting on $1 trillion per year in unexploited licensing fees."
Fourth- and fifth-level firms are difficult to distinguish from ones discussed earlier - or from each other. For example, level-four companies are said to seek to integrate "IP awareness and operations throughout all functions of the company." That seems necessary, too, for allegedly less capable compatriots. Further, when level-five firms are described as embedding intellectual assets and their management into the company culture, it is difficult to find divergence.
The last are said to have as additional objectives: (1) staking a claim on the future and (2) encouraging "disruptive technologies." Still, these could easily been collapsed into "Get a Crystal Ball!" Heuristics for meeting them non-serendipitiously are weak.
Consider, for example, the mouse and graphic interface as commercialized on Macintosh computers. Steve Jobs is said to have derived both from the Alto computer developed by Xerox's Palo Alto Research Center. While Jobs became a billionaire, "Xerox completely failed to get into the personal computer business, missing one of the biggest business opportunities in history." To avoid repeating such mistakes, Davis and Harrison suggest that companies should "identify ways the corporation can benefit from [ideas outside their business capacity] before moving on." They, not surprisingly, can offer little guidance.
One IP attorney recently stressed the need for his colleagues better to understand the identification, protection and use of intellectual capital "effectively to address strategic corporate objectives." Those for whom this is novel terrrain will find Edison in the Boardroom helpful.
Also, senior IP counsel better acquainted with the topic may find the book useful. Some will face difficulty in convincing those at the same level or higher in the corporate hierarchy of its importance. To the extent that their advocacy of the critical role to be played by IP counsel is perceived as serving selfish aims, the book should help allay suspicions.
For these and other attorneys, the value of Edison in the Boardroom could easily, and vastly, exceed its modest price.

The basic concept of this book is very intriguing: Briefly examine the life and career of Thomas Edison and then suggest direct correlations between his achievements with real-world situations in which various companies are now deriving substantial value from their intellectual capital. The authors also make skillful use of Edison's own recorded thoughts and feelings. Of special interest to me was what he had to say about the creative process. For example, "Men are just beginning to propose questions and find answers, and we may be sure that no matter what question we ask, so long as it is not against the laws of nature, a solution can be found." This what the author refer to as "The Edison Mindset." Edison apparently had almost no concern about a given experiment's "failure" which he continued to view, rather, as non-success to that stage. Too often, senior-level executives become preoccupied with results and neglect the process by which they can be achieved. Among Edison's greatest (and perhaps least appreciated) achievements was the establishment of the first research laboratory in which he and his associates would collaborate on various projects. Edison was a pioneer in recognizing the importance of assembling the best available talent and providing them with sufficient resources as well as a culture wherein those talents could be fully utilized. Davis and Harrison obviously have this point in mind when observing that "benchmarking best practices without any regard for the underlying culture of the firm can be problematic."

NOTE: For those interested in this subject, I highly recommend Organizing Genius in which Bennis and Biederman examine the collaborative efforts of those involved at the Disney studios which produced so many animation classics; at Xerox's Palo Alto Research Center (PARC) which developed the first personal computer; at Apple Computer which then took it to market; at the so-called "War Room" which helped to elect Bill Clinton President in 1992; those active in the so-called "Skunk Works" where so many of Lockheed's greatest designs were formulated; at Black Mountain College which "wasn't simply a place where creative collaboration took place. It was about creative collaboration"; and at Los Alamos (NM) and the University of Chicago where the Manhattan Project eventually produced a new weapon called "the Gadget."

This is an extremely well-organized and well-written book in which Davis and Harrison use the life and career of Edison for guidance to understanding subjects of major importance today such as breakthrough innovation, collaborative effort, the development and management of intellectual property, and effective organizational transformation. They suggest that companies (indeed all organizations) function in one or more of five levels which comprise "the hierarchy of value" for intellectual property, a model created at Andersen's Intellectual Property Management Practice and then at ICMG:

1. Defensive: "If a corporation owns an intellectual asset (such as a great business concept), it can prevent competitors from using the asset."

2. Cost Control: "Companies focus on how to reduce the costs of filing and maintaining their IP portfolios."

3. Profit Center: "Having learned how to control many of their patent-related costs, companies at this level turn their attention to more proactive strategies that can generate millions of dollars of additional revenues while further continuing to trim costs.'

4. Integrated Level: In this level the IP function ceases to focus on self-centered activities and reaches outwardly beyond its own department to serve a greater purpose within the organization as a whole."

5. Visionary Level: "Few companies have reached this level of looking outside the company and into the future. In this level, the IP function, having already become deeply ingrained in the company, takes on the challenge of identifying future trends in the industry and consumer preferences."

After an excellent Introduction, the authors devote a separate chapter to each of the five Levels and then provide a case study of the Dow Chemical Company, followed by three appendices: Mining a Portfolio for Value, Competitive Assessment, and Integrated Performance Reporting. They suggest all manner of similarities and differences between and among these five Levels, in process suggesting also a wealth of strategies and tactics to consider when attempting to achieve the desired results at any of these Levels.

To a greater extent now than at any prior time in human history, with all due respect to major developments such as the light bulb, telephone, automobile, and personal computer, corporations (indeed entire societies) seek "exciting, new, novel, and discontinuous innovations....For centuries, companies have linked ideas and money by embedding their new ideas (legally protected or not) into products to be sold or bartered. Today, however, an exciting new concept is revolutionizing the way companies extract value from their ideas: an idea no longer needs to be embedded into a product or service to create value. Today ideas are licensed, sold, or bartered in their raw state for great value." And they are getting that value through intellectual property management (IPM). Hence the importance of encouraging and supporting "The Edison Mindset."

Here in a single volume, the authors provide a comprehensive, cohesive, and cost-effective program. It remains for decision-makers in any organization now considering or at work on the design of an IPM to select whatever material in the book is most appropriate to their organization's specific needs. One value-added benefit of this book is that Davis and Harrison can assist with that selection process. A point made earlier, however, deserves repeating: "benchmarking best practices without any regard for the underlying culture of the firm can be problematic."

I throughly enjoyed the book, I read it in just a few hours. It is an informative text on how to make the most of your IP, especially for those companies that either have a great start by already having IP (patents) or those that want to get started developing it. This would have particular interest for those who want to start their journey in developing IP processes in their company. I have worked in this field for years and have read many books involving IP, but never has their been such a informative book. The nice thing is it is 100% up to date on what is going on and who is doing it. For instance, learn how Dow, probably the leader in the field of IP Practices, does what they do.

Davis and Harrison have taken their vast experiences and knowledge that they have obtained over the years of work with their clients and codified these experiences in a "best practices book", particularly focused on how to manage the IP you already have.

If you don't read this and you have an interest in this field, you will be missing what is likely to be the cornerstone text of the field.

John Cronin, CEO of ipCapitalGroup, Inc an IP Professional Services Company.

At last a book with both stories and practical frameworks! I found Kevin Rivette's book a nice story, but it had little substance, whereas Harrison's ICMG co-patriot Dr. Sullivan's books are rooted in the theory of what to do to manage intellectual assets, but sometimes tough to apply without the help of his company. This book is a good blend of the two, with company examples and an intuitive framework for managing intangibles. And its not too long to give to my execs to read on a plane. Good show!

The authors provide an excellent framework for companies to manage their intellectual property - without using too much consultant speak.

They quote examples at different levels of their framework and look at companies who are suceeding at managing and valuing their IP effectively. This is a skill which can only be more and more wanted in the future.

The most interesting takeaway is that most companies are very bad in this field, and there are very few success stories.

Harrison & Davis offer intellectual property (IP) professionals - including IP attorney's seeking to advocate for their client - a better and more effective understanding of how to manage IP as a strategic business asset. Unlike other books on the subject, Edison, and it's sequel, "Einstein in the Boardroom" (2006), offers rare pragmatic advise with evidence-based outcomes from a community of IP-savvy companies on the benefits of becoming proactive in identifying, protecting and leveraging all forms of intellectual capital to address strategic business objectives.

Julie Davis and Suzanne Harrison's book, Edison in the Boardroom, takes readers deep enough into the field of intellectual property management for them to incorporate presented theories into their respective professional disciplines - researcher, attorney, licensing exec, etc. - without the book becoming unwieldy. Excellent balance. This book can become a cornerstone text for any professional involved with intellectual property to direct his or her focus for additional study and to ensure his or her working knowledge of the challenges confronting professionals in other disciplines that together form a corporate intellectual property management program.