Steger IP, LLC
You have represented clients ranging from small start-ups to multinational corporations. How have client demands changed over the years and how have you adapted to this?
Clients have become much more sophisticated and better informed across all sizes of company. This results in clients being integral members of any team of outside counsel handling legal matters. It is generally no longer the case that clients hand over matters to outside counsel and await the results, with the only interaction being infrequent status updates. Instead, clients have access to much more information about the law, their business and the industries in which they compete. More knowledgeable clients are able to make informed, truly strategic decisions, and by bringing this knowledge and strategic mindset to a partnership with outside counsel, they are increasingly able to get better results for lower costs.
What metrics do you use to measure the success of an IP strategy?
Specific to patent monetisation strategies, we begin any engagement by conducting a deep analysis of the patents at issue, including claim coverage, infringement and market analysis. We also work with the client to understand their goals (both monetary and with respect to timing), risk profile and ability to invest time and resources into any monetisation strategy. Using this information, we then develop detailed financial models for what a licensing campaign could be expected to provide, either with or without litigation. This detailed analysis gives the client a well-informed idea of the value that can be generated by their patents and provides critical information for developing a monetisation strategy. We then revisit this analysis as we execute the strategy and update it as necessary with new information received during the monetisation process. This dynamic financial analysis is used to make informed strategic decisions when the time comes and the results of these decisions can be measured against the financial analysis to understand the strategy’s success.
How do you work with clients to negotiate deals that suit both sides?
The initial analysis described above helps us to develop a deep understanding of the client’s business goals and risk sensitivities. We also try to help the client to see what is reasonably achievable in any transaction. In addition to our understanding of the client’s goals and risk profile, we develop a similar (although necessarily incomplete) understanding of what we believe to be the goals and risk profile of the other side to any deal. Armed with this view of both camps, we are best positioned to come up with creative solutions to any issues that may arise in negotiation, and to keep deals on track that may otherwise derail.
What are the biggest challenges facing the IP transactions market in the United States?
The lack of civility, respect and humility in our interactions with one another is a major problem in society generally, and the IP transactions community is not immune to this. The lack of civility, including ascribing bad motives to adversaries and name-calling (eg, ‘patent trolls’ and ‘efficient infringers’), gets in the way of dealmaking. It is important to listen to adversaries and attempt to understand their motivations without judgement. Only then can you respond in a way that makes a successful conclusion to a negotiation more likely, rather than each side becoming more entrenched in their opposing positions.
How have your experiences in-house, at major law firms and at your own boutique firm shaped the way that you run your practice today?
The blend of these experiences has given me a particular insight into what is important to a business from an IP perspective and how outside counsel can best add value to a corporate IP programme. My time at major law firms working with some of the brightest legal minds in the business has given me a deep understanding of the law, while my time in-house working with senior decision makers has provided me with a similar understanding of corporate motivations and insight into how decisions are made. This broad base of understanding, coupled with the entrepreneurial spirit that I have developed in founding two separate law firms, has helped me to provide insight across the IP transactions spectrum and allows me to better inform and advise clients, large and small, on strategic decisions.
Steven Steger is the founder of Steger IP, where he concentrates on all aspects of monetising patents through sales, assertion campaigns and strategic IP counselling. He has a broad range of IP experience, having served as chief IP counsel at multinationals and start-ups and represented a broad range of clients in private practice. His combination of in-house and major law firm experience gives him insight into what is important to businesses from an IP perspective.