Exclusive Q&A On Intellectual Property with Andrew J. Sherman

By Andrew J. Sherman

Posted: 14th August 2015 10:07

Is the era of Patent Trolls now behind us with the shifting political mood toward aggressive patent enforcement?

The era of patent trolls is not yet behind us, much to the disappointment of small and mid-sized companies worldwide.  While several pieces of legislation have been introduced into the US Congress, no laws have yet to be passed in part due to the complexities of the various constituencies who both support and oppose the legislation.  The need to strike a balance between the rights of the intellectual property holder versus the wrongful attacks of a non-practicing user (NPU) has yet to be struck from a legal or policy perspective.  The downtick in patent trolls may actually more to do with an overall loss of momentum and intolerance than it does with a shifting political or legislative landscape.

Are You Witnessing Any Prominent Trends Or Strategies?

One key trend for the balance of 2015 and 2016 will be the focus by larger and medium sized companies on the establishment of effective intangible asset management (IAM) systems.  Boards of directors, shareholder activist and other stakeholders are creating pressure on company leaders to better manage and leverage the intangible assets of the company in order to drive new revenue streams, better margins and global business opportunities.  Intangible assets have become the primary drivers of enterprise value and no public or significant privately-held company can afford to be “asleep at the switch” in their fiduciary duties towards the management of these important resources.

What problems do you foresee relating to wearable tech, 3D printing and other new technologies?

Ever since the invention of printing press, the advent of radio and television and more recently the power of high speed downloading and uploading over the world wide web, intellectual property law has struggled to keep pace with society’s ability to disseminate and replicate  intellectual property we are now entering into an era of advanced robotics, drone technology, wearables, digital health, holography and 3-D printing which will place a burden on both business leaders, lawyers and regulators to keep pace with the speed of technological change.  At this point, very little appears to be happening to protect the rights of intellectual property owners in the context of these emerging technologies and the courts are probably not the best nor the most efficient forum for eventually deciding these rights.  It is hypercritical that thought leaders that are at the intersection between technology and intellectual property begin thinking about the right place to find a balance which is both fair and reasonable to all affected parties. 

What are the main difficulties in representing international clients in cross-border intellectual property disputes?

The most difficult challenges in representing international clients in cross-border transactions or disputes involving intellectual property are the significant differences in both regulation and cultural attitudes towards those who develop and harvest knowledge and innovation.  The fundamental structure of each society from country to country varies significantly with respect to creativity, entrepreneurship and as to how the fruits of those labours should be rewarded and allocated.  A second major challenge are the inconsisten cies in the enforcement of these laws and the overall lack of global harmonization by and between regions and globally.  A third major challenge is the difficulty in accessing the judicial systems and  courts in an efficient and timely manner, thereby making it more important than ever to negotiate provisions in all intellectual property transactions which dictate the venue for resolving disputes, the laws that shall apply and the processes to be followed when disputes arise.

In an ideal world what would you like to see implemented or changed?
 
In an ideal world, commercial banks, sources of debt financing and even the equity based capital markets would do a better job recognizing the strategic value of intangible assets.  While we do have some examples of companies that are rich in intangible assets being rewarded (for example Facebook’s acquisition of What’s App for $22.5b), most small and mid-sized companies are still struggling to have commercial lenders to accept their intangible assets as valid security for collateral of an ordinary business loan and there are still tens of thousands of companies whose exit values are being determined by multiples of EBITDA rather than their inherent strategic value as driven by the potential of their intangible assets. 
 

Andrew J. Shermanis a Partner in the Washington, D.C. office of Jones Day, with over 2,700 attorneys worldwide.  Mr. Sherman is a recognized international authority on the legal and strategic issues affecting small and growing companies.  Mr. Sherman is a top-rated Adjunct Professor in the Masters of Business Administration (MBA) program at the University of Maryland for 26 years and Georgetown University for 17 years in both the business school and the law school where he has taught courses on business growth, capital formation and entrepreneurship and won numerous teaching awards at both schools..  In 2013, he was named by NACD as one of the Top 100 Leaders in Governance and in 2014, he was included in the global IAM 300, recognizing the world’s thought leaders in managing intangible assets.  Mr. Sherman is the author of twenty-six (26) books on the legal and strategic aspects of business growth and capital formation.  Other recent titles include the best-selling Mergers and Acquisitions from A to Z, 3rd edition which was published by AMACOM in 2010.  His twenty-third (23rd) book, Harvesting Intangible Assets, Uncover Hidden Revenue in Your Company’s Intellectual Property, (AMACOM) was published in October of 2011.  His twenty-fourth (24th) book, Raising Capital, 3rd edition was published in the Spring of 2012, his twenty-fifth (25th) book, Essays on Governance published in late Spring of 2012.  His twenty-sixth (26th) book, co-authored with Elizabeth Vazquez, Buying For Impact:  How Buying From Women Will Change the World, was published in February of 2013. 

Mr. Sherman can be reached at 202-879-3686 or e-mail ajsherman@jonesday.com


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