I wish I had a dollar for every time I've heard a C-level executive say something to the effect that her or his organization's "most valuable assets walk out the door at the end of each day." Indeed they do. How effectively are they managed? In turn, how effectively do they manage the intellectual property entrusted to their care, especially now when organizations have become so "transparent" as they struggle to "navigate the tricky passages where the law and business of intellect assets converge? What we have in this volume is a wealth of information, observations, insights, and suggestions that can be of incalculable value to decision-makers as they make their way during that perilous journey.
Paul Goldstein carefully organizes and then presents his material within seven chapters, followed by a "Sources" section (Pages 209-231) for those who wish to obtain additional information about one or more issues addressed in a given chapter. As Goldstein points out, "In this book I will examine the most important forms of intellectual property, using legal studies to illustrate routes to success and failure in managing legal risk and extracting value from these assets. I will also shine a light on the underlying forces of change that make intellectual property so challenging as a business asset."
Goldstein is a professor at Stanford Law School and counsel to the Morrison & Foerster firm for which he works on intellectual property litigation and transactions for corporate clients throughout the world. Of special interest to me is his explanation of how and why technological change as well as shifting social and economic currents regularly disrupt the patent, copyright, trademark, and trade secrets that protect intellectual assets. Therein lies what he perceives to be a paradox: "without property rights these assets will be underproduced, but with property rights they will be underused" and thus deprive legislators and judges of "steady compass points" to guide their lawmaking.
He addresses questions such as these:
What are the most important forms of intellectual property?
Which "routes to success and failure in managing legal risk" should be carefully considered?
How to extract value from IP assets?
What are the underlying forces of change that make IP so challenging as a business asset?
Why are the risks and rewards of intellectual assets no less manageable than those of other business activities?
Which management tools can be most helpful to managing intellectual assets?
As Goldstein explains in his Introduction, "The central lesson of this book is that every decision involving intellectual assets is ultimately a legal decision, and that every legal decision is at bottom a business decision. If intellectual property is economically too important to be left to lawyers, it is also too legally charged to be left to managers." They must work effectively together to ensure that all business decisions are legally sound and that all legal decisions support the given enterprise in terms of its objectives, strategy, and performance.
In February of 1859 in Jacksonville, Illinois, Abraham Lincoln delivered a "Lecture on Discoveries and Inventions" in which he noted that the U.S. Constitution includes a clause guaranteeing the "right" of inventors and authors to royalties for patents and copyrights. "Before then, any man might instantly use what another had invented; so that the inventor had no special advantage from his own invention." Lincoln then made a critically important point: "The patent system changed this; secured to the inventor, for a limited time, the exclusive use of his invention; and thereby added the fuel of interest to the fire of genius, in the discovery and protection of new and useful things." These thoughts were expressed almost 150 years ago.
I recalled Lincoln's lecture as I worked my way through Chapters 2-7 in which Goldstein rigorously examines issues concerning patents, copyrights, trademarks, trade secrets, intellectual assets on the Internet, and intellectual assets in international markets. What he offers in this volume (especially to C-level executives without formal training in law) is a remarkably thorough briefing on legal fundamentals (i.e. parameters, perils, relative advantages and disadvantages, and possible implications) at a time when there are so many trends in progress or emerging, notably increasing exploitation abroad of all forms of intellectual property as well as the decline of the ratio of U.S. receipts to payments. From Goldstein's perspective, these and other trends point to a single fact: " although the United States may not soon revert to its nineteenth-century status as a net importer of intellectual assets, the intellectual trade margins it enjoyed during the latter part of the twentieth-century will probably continue to decline in the twenty-first century. Thomas Friedman's shrewd generalization that `the world is flat' applies as directly to the production of intellectual goods as it does to other goods and services." For decision-makers who are now struggling to understand the "tough new realities" that could make or break their organizations, Paul Goldstein's brilliant book is a "must read."
Those who share my high regard for this volume are urged to check out Friedman's aforementioned book, The World Is Flat and Competing in a Flat World: Building Enterprises for a Borderless World co-authored by Victor K. Fung, William K. Fung, and Yoram (Jerry) Wind as well as Business Power: Creating New Wealth from IP Assets co-authored by Robert Shearer and other members of the National Knowledge & Intellectual Property Management Taskforce and Essential of Intellectual Property co-authored by Alexander Poltorak and Paul Lerner.
