Yet2com Blog

Jackie Hutter is my favorite IP attorney in open innovation.  She has done a lot of interesting deals and represented both large and small companies.  Below is a great article by her – Ben

Small companies CAN effectively partner with large companies in Open Innovation…

Open Innovation guru Stefan Lindegaard recently asked me what the biggest IP legal mistakes small companies make when they are working with large companies. This is a subject very near and dear to my heart, as I am currently “moonlighting” as GC of a start up energy company that is moving toward licensing our technology into large companies. Also, as a senior IP lawyer at a multi-national consumer products company, I was on the other side of such deals on more occasions than I can count. Prior to that, I was a law firm partner representing large and small corporations in patents and licensing issues, and in doing so, I now realize that I killed more deals than I ever facilitated, a situation that is more typical of law firm lawyers than it should be, unfortunately.

In view of this multi-faceted experience, I present this list of the 5 most common mistakes companies make when working with large companies in Open Innovation.

1. Thinking you have all the answers for the large company’s problems:

As a small company, you often have only have a single idea or technology and you quite properly focus your attention in this direction. This can be damaging to your ability to do complete an Open Innovation deal with a big company, however. The large company may not care about what you see as the value of your technology because they are the experts in their products and customers. Indeed, you may be wholly wrong about why the large company is interested in speaking to you. If you want to sell or license your technology to a large company, your best bet is to focus on the specific technology aspects, and leave the business and customer issues to the other side, at least at the early stages of discussion.

2. Bringing the wrong lawyer to the table:

Very often small companies assume the lawyer who handles their intellectual property issues is the appropriate person to bring to a conversation with the big company. However, the legal skills a small company needs to obtain its patent rights are very different than what are needed to get a deal done. While protection of your small company’s IP should be paramount in any dealings with the large company, putting up complicated restrictions about the use and ownership of your IP even before you know a deal is likely to happen, which is the natural inclination of most IP attorneys, can often end up in the other party walking away before a deal is even underway. I have found the best lawyers to negotiate deals in the Open Innovation context are business-focused attorneys, who tend to be people who have served a stint in the corporate world and who might even have little experience with high-end IP issues. It can be tough to find someone with these credentials, however. As an alternative, I like to work with licensing experts, most of whom have successfully closed most deals in a year than many law firm IP lawyers see in their entire careers. These licensing experts are frequently not lawyers, but they have negotiated enough agreements to be very good at spotting the legal issues and, in this regard, they often do a better job than lawyers.

3. Putting the legal issues ahead of the business issues:

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