Intellectual Property Strategies
You have won particular acclaim for your work in dispute resolution. What skills do you need to excel in this area?
Acting in a number of senior business roles in both the corporate and consulting worlds has defined my career and helped me to understand a broad range of perspectives, as well as giving me significant technical, legal and economic understanding. I believe that my corporate experience in cutting-edge technical areas, where I had business management and broad transaction responsibility, has differentiated me with regard to other experts in the industry. I look at my work in a transactional way with an ability to leverage my corporate decision-making background.
What has been the highlight of your professional career so far and why?
Being named a Global Leader, realising that I have the respect of my peers, the fact that I have been in the business for almost 40 years and still find the work interesting, exciting and fulfilling, and that I have made a successful career in the IP world as a non-lawyer. There was no real career path when I started in the business. I think some of us were trailblazers and I am proud of that. For executives in, say, Japan to consider me a friend and colleague and to be respected there as an outsider is one of the highlights of my professional life. I love the intensity of a trial as well as being part of the strategic team. I also get a lot of satisfaction that transactions I was involved in executing years ago are still relevant to litigation cases now – that companies and technologies I helped to create are relevant in today’s technical and business world.
How do you keep clients on board – especially when the stakes are so high?
My job is to solve problems and my team is excellent. We have been together for a long time and they still tolerate me – they are my advantage. We manage and exceed expectations. Most of my client relationships are long term and almost all my work comes from referrals. It is my job to ensure that my side of the case is not something that clients need to worry about. That frees up resources for the legal team. We are incredibly client and results focused. Plus, we are fun to work with – in intense matters, that can be a real game changer.
What part should IP valuation play in a broader IP strategy?
Valuation or understanding value is often overlooked from a strategic standpoint, at least in companies that I have not worked for. Why spend money on intellectual property or any asset that, on a risk-weighted basis, is not valued far more highly than the cost and effort required to generate value from it? How can you develop or execute a strategically focused, value-extracting business plan without understanding asset value and the relevant pathway to success? Whether licensing, internally leveraging or even selling IP assets, understanding both the value and the path to generating value are inextricably linked. Understanding how and what to protect, which assets are more valuable, how to get value from them and the relevant risk parameters are all linked to IP valuation.
What changes would you like to see to the US licensing landscape – and how likely are they to happen?
The licensing landscape has been tough: holdout became the order of the day, often under the false guise of holdup; politics and lobbying rushed into an unprepared IP world; often unsophisticated money flowed into the industry; and the resulting crash happened. Assets needed to be repriced but the fickle underpinnings of politics have created risk and uncertainty. The pendulum swung broadly against patents in particular, with the courts and politicians competing to see who could damage the industry more deeply. Legal certainty made the US patent system the envy of the world and that has, to some extent, collapsed. From my perspective, it comes back to value. Understanding risk is the biggest factor in valuation. We need greater legal certainty and clarity on what are legally protectable IP assets. We need to reduce hostility in the licensing transaction world. Will a new administration and Congress swing the pendulum back to the centre or will lobbying and political winds keep risk and uncertainty high? I am hopeful that the pendulum will swing slowly back – I am already seeing it in the courts. I think patent holders need to rethink their assets, and that holdout and holdup may cancel each other out.
Founder and CEO
Michael Dansky is the founder and CEO of Intellectual Property Strategies, a full-service IP advisory firm. Mr Dansky has more than 35 years’ experience as a corporate executive and partner at international consulting firms, advising companies, law firms and investors on the valuation, transaction and strategic leverage of IP assets, including testifying in many high-stakes litigation matters. His corporate experience includes senior transactional roles at Amoco, Polaroid and Xerox, where he was responsible for IP strategy and negotiated transactions throughout the world.