A Holiday party treasure hunt this month became a reminder about how winning a game also depends upon understanding exactly what game you are playing.  This treasure hunt game involved finding 12 clues and answering 12 questions about objects around where the clues were found.  As the dozen or so teams heard the rules of play, they learned that the first three teams to find all the clues and answer all the associated questions correctly would win prizes.  So as the game began, everyone rushed off.  And somewhere around question 4 my partner and I got stuck.  So no way were we going to finish first.  In fact, I am pretty sure we finished last.  However, we also won one of the prizes.  The reason: we had been accurate in answering our questions.  Although the treasure hunt was presented as a race, accuracy, not speed, was the dominant condition for winning.  Speed was only the tie breaker.

 Ever seen that in IP?  IP, especially in first to file countries, also has similar conditions for winning.  It demands a qualitative aspect to the described invention first.  Speed of filing is the tie breaker for ownership.  In our treasure hunt game above, we had played a Tortoise to a bunch of Hares, not thinking at the time that our competitors, in their haste to be first to finish, would answer so many of their questions wrong.  While this post is certainly not a recommendation to slow down – the title of my IP Strategy book is Outpacing the Competition after all – it is a reminder that speed may only be the tie breaker in a competition where the dominate factor is getting it right.  

(Image credit: Hemera)

Another universal principle of strategy appears in historical manuscripts as “Lure the Tiger Out of the Mountain.”  The idea is to entice your adversary to fight on your terms, here presuming that if you otherwise take a fight to the mountain, then it would be to the tiger’s (adversary’s) advantage.

Fighting on your terms can mean a number of things.  In this post, we will focus on place.

There is no question that where you engage in an IP conflict matters.  IP grants you the right to enforce exclusivity.  That right is an interpretation of law and not an absolute.  Courts in different places, even within the same countries, will interpret the right to exclusivity differently.  Depending upon your position, you want to fight in the place most likely to deliver the outcome you want.

Research and seek to fight in the best venue to win, both country and court.  Given a choice, select a riskier venue only if the benefit of a positive outcome for you outweighs the additional risk you will accept.  It is important to consider all aspects of the place you will fight inclusive of verdict track records, costs, and likelihood of the place to create a useful precedent elsewhere.

Fighting in the wrong place becomes a mistake when you had a way to fight in a better place for your case and relinquished that advantage to the opposing party.  Never be overconfident that place does not matter in a fight.  Place can be important enough to give you reason to preempt an expected lawsuit with a lawsuit of your own filed in the best place for you.

(This is number 30 in our list of IP mistakes and how to avoid them.)

(Image credit: Keith Roper)

The surest way not to be sued for IP infringement is to not infringe.  While this does not guarantee that you will avoid some IP assertions anyway, having not actually infringed puts you on better ground than otherwise.  It becomes our mistake number 6 when infringement is done out of negligence or ignorance, and it can also be a mistake when done with any degree of deliberation if you have misjudged the consequences.  The impact of these consequences sometimes differs, depending upon whether your lead rule of measure revolves around a logical, emotional, or moral argument.

In any case, whether by accident or deliberation, an infringement creates vulnerability in that you have given over to another entity some aspect of value that it may extract by enforcing its right to exclusivity against you.  That creates an uncertainty in the viability of your position that will exist either until the infringed IP expires or the matter has resolved itself by some other means.  That uncertainty, like any uncertainty, can be assigned a risk reward equation, and the calculation of that equation can logically allow the risk of an infringement to make sense or not make sense based upon the potential reward.

In fact, it may be impossible in some industries, where hundreds of patents owned by numerous entities may read on a single product, to move innovation forward at all without infringing upon someone.  Any resulting attempt to not infringe could in fact be a mistake in its own right because innovation would grind to a halt.  So the bottom line on this mistake is to avoid moving ahead with blinders on and instead understand and prepare for the infringement risks – and then also to include within your IP program an understood element of ethics that it is the policy of your enterprise to maintain and the reason why.  In a business environment where open innovation models have gained traction, those businesses that have a reputation for fair play may be the first to hear about promising new initiatives from the outside.

(This is number 6 in our list of IP mistakes and how to fix them.)

(Image credit: out0fwave)

Of course following the ideal solution noted in mistake #31 and applying it to IP enforcement fights, a strategist can certainly achieve the complete opposite of the ideal solution.  This would be a solution that provides all drawbacks and no benefits.  Whereas the ideal solution is theoretical – you cannot have a zero in a denominator for the benefits/drawbacks equation – its opposite, the “perfect disaster,” is quite achievable.  You can have zero benefits, and drawbacks can go on to infinity without violating any mathematical laws.  Choosing the wrong fight means to choose a fight where the probability of achieving the perfect disaster is higher than other possibilities you might choose – and really comes down to asking if you can win and if the fight is worth the costs.

The benefits you expect to receive will be direct or indirect.   A direct benefit could be to secure markets your IP protects through enforcement that keeps a competitor out.  An indirect benefit could be to make an example through enforcement that others will see, causing them to avoid infringing and achieving a like response from you.

Choosing the right fight involves both choosing a fight where you can achieve your objectives and where the achievement of those objectives delivers the benefits you want.  This last is an important subtlety, and is why in a fight, both contestants can win and both can lose.  If you recall the original Rocky movie by Sylvester Stallone, Apollo creed wins if he wins the fight.  Rocky wins if he “goes the distance.”  Both can declare victory when both achieve their objectives within the same fight.  It became the “right fight” for Rocky when he understood that he did not need to actually win to achieve the meaningful result he wanted.

When you fight with IP consider the benefits you wish to achieve and the potential drawbacks.  See if there are other ways or other fights that can deliver the benefits you want that either raise your probability of success or your degree of freedom of benefiting from variable levels of success – i.e. can you win by “going the distance” or do you have to actually win the fight?  It’s a measure IP strategists take all the time.  Think about validity challenges.  Do you actually need to invalidate a competitor’s patent, or does the reasonable possibility of invalidity allow you to achieve the same result, perhaps securing a license.

(This is number 32 in our list of IP mistakes and how to fix them.)

(Image credit: Hemera)