Biz Dev: It’s not what you think. It’s more.

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I recently read a lengthy piece from James Cohane’s personal blog describing, in his terms, a definition of Business Development (usually called “Biz Dev”).  You’re welcome to look at it here.

Instead of rehashing James’ comments in this post, I thought I’d add my own analysis to the discussion.

For me, the term Business Development implies “all outbound activities that help a business achieve its mission and objectives subject to its Core Values”.  Yup, that’s a pretty broad definition, but, in my mind, it’s also very focused.  Here’s what I mean:

Business Development is Sales

The sales function of any organization attempts to change behaviours of its prospects and customers to act more favourably towards the organization.  These efforts can result in direct sales of your products/services or in introductions to other channels that will create direct sales of your products and services.

Most Biz Dev “sales” are complex in nature and as a result require a much more sophisticated approach than what one normally thinks of “sales”.  Rookies or Product Pushers need not apply!

In order to attain these results, your Biz Dev team needs to have the relevant sales skills so that they will know when to recognize opportunities and to create value for your clients and yourselves.  What are these skills? Most of today’s consultative sales programs (my favourites are Huthwaite and FranklinCovey) teach relating, questioning and positioning skills to their students so that when presented with a particular challenge they can problem solve to attain win-win results.

So while Biz Dev professionals aren’t “pure” sales, they need sales skills.  If they don’t have these skills, then the might be able to do Research.

Business Development is Research

While not necessarily and outbound activity, Biz Dev professionals need to be able to find stuff: companies, people, and products.  They need to be able to use the internet, they need to be able to read legal documents and they need to be able to assemble a mosaic of information from a whole bunch of disparate data.  Generally their research results are used for two categories:

Product Research

Looking to launch a new product or find out how your existing product is being used?  Market research is done by your marketing team (if you have one), but competitive intelligence gathering is done by the Biz Dev team.
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If your team has the right skills, they’ll execute channel checks by calling customers, sales channel partners and vendors or suppliers.  Once they’ve done their job, you’ll know what people think about your existing products and what they’re really seeking to help them solve their biggest problems.

Partner or Target Research

Looking for a distributor in Topeka, Kansas or place to build a plant in Burgas, Bulgaria?  Your Biz Dev team should be able to find the contacts in those locations and help your executive or Corporate Development team get the deals done.

Business Development is Corporate Development

In my view, corporate development activities are outbound activities that provide long-term strategic value towards to the accomplishment of a company’s vision and mission.  These include business unit acquisitions and divestitures, and the development and management of strategic partnerships.  The results of these efforts appear to be episodic as the Corp Dev team may close two or three transactions a year, but all create significant impact to the business within the first few quarters.

Sadly, most businesses don’t have a Corporate Development team so the Biz Dev group fills this function.  So these Biz Dev professionals have to be well versed in the areas of sourcing transactions, due diligence, transaction execution and ongoing management of relationships.  Smaller companies without dedicated Corp Dev teams will rely on their Biz Dev professionals to manage relationships with consultants to help them with these transactions.

Conclusion: Business Development is Multi-Faceted

So today’s Biz Dev professional has to be one part sales, one part research, one part investment banker.  They have to be sensitive to the mission and objectives of the company as well as its culture and must ensure that their activities assist the entire organization.

Biz Dev professionals in smaller companies are generally alone and thus have to be able to multi-task, even when those tasks compete and conflict with each other.

Sounds like a lot of skills wrapped into one person.  Well you’re right, the best Biz Dev professionals have both street and book smarts combined with some real life experience.  They’re not as unique as Unicorns, but they’re pretty darned close.  The good news is that you’ll know if you’ve got one in front of you when you’re talking to them as they’ll be confident and understand their role and opportunity to help you sooner than you’d realize.

So tell me, what do you think?  Is Biz Dev really multi-facted or is it over-rated?

3 Free Things to do Right Now to Protect your IP

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Lock up your IP In working with a number of startup and established companies I’m often struck by how unprepared these companies are at safeguarding their Intellectual Property (IP).  So I’ve decided to write this post to outline three of the easiest techniques I’ve learned that can protect your company from having its IP stolen.

What is IP?

Before I begin with the three ideas, let’s do a quick recap of what comprises IP.  Patents, Trademarks and Copyrights are the most well known and comprise the bulk of IP literature.  Lesser known IP products include, but are not limited to, Trade Secrets, Workflow Processes, Customer Lists and Organized Workforces.

Protecting Inventions or Ideas using Patents, Trademarks or Copyrights is a straight forward legal process; depending on the nature of your unique idea will determine which legal protection is best for you.  The other IP types do not have any specific legal protection (although most US states have adopted the Uniform Trade Secret Act of 1985), but they can be generally protected through normal contract law.

IP is about People

Your companies’ IP was probably built from the ideas and thoughts of your team with or without the assistance of third-party vendors.  So my three ideas relate to specifically to clauses you can insert into your company’s standard employment and vendor agreements.

What?  You don’t use employment or vendor agreements?  Or you only have agreements with key personnel.  Shame on you… you are just asking for your IP to be ripped off.

Regardless of their role, every one of your team members (including executives and founders) should sign an employment agreement.  My colleague John Simpson at Shift Law in Toronto explains why in this post.

There are hundreds of styles of agreements available on the web, but you should have a competent employment lawyer draft up a template agreement for your company, because when it comes to employment and IP matters, the local law is most important.  That being said, I found this post on NOLO.com which provides a great overview of the components of an employment agreement here.

3 Things to do Right Now that Protect Your IP

As you might surmise the three techniques relate to clauses to make sure are in your employee and vendor agreements.  Specifically:

1. Assignment of IP Rights Clause

Every one of your agreements should have a clause which states that in the event that any IP is created as a result of this relationships (employment, vendor) that the signee assigns these rights and privileges to your company.  It sounds really simple, but when I execute Due Diligence at companies on behalf of investors, I found that in  99% of cases, this clause does not exist in the employment agreements and 100% of the time in the vendor contracts.

Don’t know how to write this clause, good..that’s not your job.  Keep inventing and have your employment lawyer draft this.

2. Confidentiality Clause

Good new! For those clients who use agreements, almost every one has some kind of confidentiality language in their agreements.  Bad news, is these agreements rarely address trade secrets or other non-legal IP contructs. Instead, they include broad and general ideas relating to confidentiality.

Broad sweeping confidentiality statements have little nforceability in court, but specific statements create  higher level of accountability for your employee and vendor.  As an example, your confidentiality clause could include:

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Make sure that this section of your agreement also deals with how employees and vendors will manage your Secrets after your relationship has ended.   For the greatest enforceability, the limitation on disclosure should be a reasonable time period (say 2 years).

3. Non-Solicitation Clause

A Non-solicit clause is different from a non-compete clause in that its focus is on the use of your company’s internal knowledge for non-company related purposes.  A non-compete clause is an attempt by your company to restrict an ex-employee or vendor to operate for a specified period of time (these clauses are rarely enforceable).

So the point of a Non-solicit clause is that you don’t want a current employee to use your company’s IP to moonlight and generate additional revenue or ideas that would otherwise be your property (see Assignability Clause above).  This doesn’t mean that your employees can’t “tinker” or experiment on their own time based on their existing work, but instead means that these same employees shouldn’t be able to receive any commercial benefit from such tinkering if it’s based on your company’s iP.

And if your ex-employee or vendor uses your existing IP to build something for commercial purposes,  then that should surely be restricted in this clause.

Putting it all together

So by including these three clauses in your employment and vendor agreements you’ll not only have a better shot at protecting your company’s IP, you’ll also be able to tell your team, partners and potential investors that IP is important and that you’re prepared to protect it.

So while they’re not exactly free (you need a competent lawyer to draft them so that they can be enforced), once you’ve paid for them once, you can use them over and over again, so they’re almost free.

Call to Action

If I’m helping investors with a Due Diligence or Valuation assignment and I see these three clauses in their agreements then its an indication that the management team has a good handle on the business drivers and is serious about protecting the real value of the business because IP is a Catalytic Asset that an accelerate your business faster than you think.

So here is my challenge to you… look through your agreements and within the next 14 days decide to do something about them if they’re not good enough.  Get serious about protecting your company’s most valuable asset: its IP.

As always, if you have questions, please use the contact us form and I’ll do my best to get back to you.

 

IP as a Catalytic Asset

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I’ve recently been reading and thinking a great deal about Intellectual Property and its value to society, you could say that I’m a little obsessed with the concept. But hey, that’s my passion.

So forget about approaches to value and technical methodologies, let’s ask ourselves the question: If I have something that can multiply the value of my other assets, what’s that worth? I think it’s way more than what you or I could imagine, but since I’m the guy writing this post and who has the actual credentials and smarts to figure it out, I guess I’ll explore these thoughts with you.

As I said in my recent LInkedIn post entitled “Intellectual Property Valuation: The Final Frontier?”  I spent my mental energy setting up the discussion.  Today, I hope to advance it forward a little bit.

How is IP Catalytic?

The term Catalytic is a derivative of the word Catalysis which Wiki describes as “Catalysis is the increase in the rate of a chemical reaction of two or more reactants due to the participation of an additional substance called a catalyst.”  

So if a substance can modify the output of a reaction or combination of several factors then it is a catalyst.  In my time working with private and public companies, I’ve found that with the right mix of physical, human and financial assets, most businesses can grow at around 2x the long term rate of inflation.  However those organizations experiencing sustained hyper growth in their key metrics (subscribers, users, revenue, RevPAR, whatever) are most likely doing so because the combination of their physical, financial and human assets are multiplied by their IP.

Some authors describe these hyper growth companies as being disruptive.  I characterize them as having IP that is so unique that it (the IP) makes the entire entity disruptive.  Think about it, why is Yelp in hyper growth?  It’s not because they’ve done anything special with HTML code or outbound advertising sales processes.  Yelp is in hyper growth because they were first to market with a process that allows consumers to easily find, rate, review and connect with local businesses.  Yelp’s IP is the combination of source code, people and content that connect local businesses to consumers in a meaningful way.  After it’s web interface was completed in early 2007, Yelp’s was one of the first creators of native applications for smartphones,  and I would argue that one of its core IP assets are the agreements it has with phone makers to pre-load its app on their phones (kudos to Jeremy Stoppelman and the Yelp Biz Dev team).  The Yelp native Apps on smart phones created hyper-local business directories in the palm of the consumers hand.

Didn’t Yellowpages do this?  Nope…  Yellow Pages tried to combat the move to hyper-local directories by further segmenting its core products into smaller “neighborhood” books before it even got into the web game, but who wants to carry around a smaller version of the Yellow pages?  Ask any small business owner about how often a Yellow Pages ad salesman came to them in the mid 2000s trying to sell them more product, rather than better product.

Measuring a Catalytic Event
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So if you follow my argument that IP is a catalyst then we need to understand the process of Catalysis.  I go back to high school chemistry to understand the process, so bear with me. Here’s a picture of the Catalytic cycle:

Catalytic Cycle

Catalytic Cycle

Once a catalyst has been entered into a combination of reactants (stuff) the result is something that neither reactant could produce without the reactant.  So it’s not 1+1=2, its more like (1+1) x 2=10.

There are two types of catalysts: Regenerating and Sacrificing.  Most catalysts are Regenerating, but those that are sacrificial not only aid in the output from the reaction but also assist regeneration of the main catalyst.   Despite that most “good” catalysts are regenerating and allow the reactants to continue to grow and react over time, they can only continue to affect a reaction if there are reactants.  Eventually the reactants exhaust themselves and new ones need to be put into the mix.  How do we measure this?  Simple, measure the energy or output of the combination produced by the reactants without and with the catalyst.  It’s easier to visualize if you have this diagram;

Before and After Energy Output Involving a Catalyst

Before and After Energy Output Involving a Catalyst

Now that we have an idea as to how to a catalyst affects two reactants we can find a way to measure the impact that the catalyst has on the reaction.  In its simplest terms, the impact of the catalyst is the difference between the two reactions under the same circumstances.  Translating this measurement into an economic framework is a little harder than high school chemistry and instead of boring you for another 800 words, I’ll talk about this over the next few posts.

Do you believe that Intellectual Property (IP) has catalytic properties?  Why or Why Not? I’d love to hear your thoughts.  Please write them in the comment section below, all “normal’ comment will be posted.

 

CrowdingFunding IP

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Crowd, Prior Art

Using the Crowd to Find Prior Art

The USPTO put out a press release this week requesting participants to attend its Roundtable on Crowdsourcing Access to Prior Art at the USPTO offices in Alexandria, Virginia on April 10th.  If you want the nitty, gritty details, click here.

As far I can tell, the point of this little shindig is for patent examiners to be able to talk to real IP people about the process of finding prior art in the creation of the patent submitted to the USPTO.  The press release states that not only will attendees be able learn about crowdfunding prior art resources and legalities of using them in third-party pre-issuance submissions to examiners, they’ll also gain insight so as to make better submissions.

Initially, it seemed to me that this “roundtable” is really just training session for examiners to get up to speed on the current crowdfunding environment and is not what I would call a investor friendly event.  I mean, the press release pretty much says that the primary purpose is for examiners to have an opportunity “It will also help the USPTO update its guidance and training for patent examiners to help them more effectively use crowd-sourced prior art.”

So how can the USPTO make this process more friendly to inventors and attorneys and agents who won’t be anywhere near Alexandria, Virginia on April 10th?  I posed this question (and others)  to Jack Harvey, the Director of Technology at the USPTO. Here’s the just of the exchange:

TJ: Why is the USPTO hosting this Roundtable on Crowdfunding Prior Art?

JH: Under the new America Invents Act section 35USC  1.122E requires that the USPTO be able to receive submissions from third-parties.  This roundtable is an extension of a pilot project called Peer to Patent that the USPTO ran off and on with the NY School of Law from 2007 to 2011, whereby, using a web interface, individuals of the public could submit applications of prior art to the USPTO so as to help examiners find additional prior art that was not available in their existing resources or databases. 

Since the AIA became law (about 18 months ago), the USPTO has collected over 1,200 submissions of prior art from the general public, but they USPTO has had no formal way of managing these submissions and how they will be handled internally and the USPTO is looking at more formal crowdfunding ways to organize and sort through this prior art for its own internal use in ways similar to StackExchange’s AskPatents.com operates.

TJ: Who do you expect to attend this roundtable?

JH: We expect that we will have patent practitioners, corporations that are involved in crowdsourcing, and other interested internet and inventor companies in attendance.

TJ: What about patent examiners?

JH: We have over 6,000 examiners here on staff in Alexandria so we’re limiting the number of examiners that can attend this roundtable.  It’s most likely that those in more senior or supervisory capacity will be in attendance, if anything.

TJ: How do you see crowdsourcing access for prior art to take place?
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JH:  It’s too early to tell how we’ll implement suggestions for using the general public to identify prior art.  We don’t really know what technologies will be used or what the process will look like.  That’s part of the reason for the roundtable.

TJ: Who is going to be speaking at this event?

JH: At present we know that someone from StackExchange will be speaking but are not exactly sure who.  Also Micah Siegel is scheduled to attend at this time.

TJ: How is this roundtable discussion being made available to those who can’t physically attend the event?

JH:  After you sign up for the event you’ll be given a Webex registration link so that you can watch the live feed in real time.  While you can’t ask direct questions if you ask questions in the webex chat box, myself or someone from the USPTO staff will endeavour to get the questions answered in real-time.

Also you can make comments to the roundtable until April 25th by responding to this notice.

Our View: 

As mentioned by Professor Dennis Crouch and Jason Rantanen in their September 19, 2012 blog post (here), the managers at the USPTO are struggling with comply with 35USC1.122E as to how to allow for the public to have an active role in the pre-issuance/submission process.   It seems that the USPTO is hoping that by engaging IP practitioners as to how to collect and assemble prior art from more than its existing databases, it can improve the issuance and pre-submission processes.

When I asked Jack about where such prior art that the USPTO doesn’t have in one of its extensive databased he gave me three interesting examples: a university archive that hadn’t been digitized and made available, a state document that wasn’t in the federal registry or a thesis or research paper that was published by an academic institution that hadn’t been made its way yet into any formal database.

Will Crowdfunding of Prior Art work?  I’m not sure, but I think that harnessing the power of more than just their existing resources can only be beneficial, I am just concerned that by having more data available from crowdfunded resources examiners take more time to issue their decisions because they will have more data to review in a less searchable format.  And that’s the last thing practitioners and inventors need… longer waiting times.

 

 

Trademark your Domain Name?

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Until recently your website’s Top Level Domain or TLD was unable to be given a trademark or copyright by the US Patent and Trademark Office (USPTO) for very technical reasons.  This meant that if you had a TLD that ended with .com, .org, .net or other prominent TLDs from ICANN that you couldn’t protect your domain name from duplication using other TLDs.

With the introduction of potentially hundreds of new TLDs called generic TLDs (or gTLDs) in the ensuing months, the USPTO has recently issued guidance as to when your TLD could be eligible for a copyright or trademark.  While you can read the entire document here, our summary might be easier on your time.

In order for you to be able to register your existing or new gTLD or TLD, you’ll need to provide the USPTO with evidence of the following:

1, Your gTLD will be a “Source Identifier”

What’s that? According to Digimind a source identifier is an agent that keeps you updated on the new sources that need to be tracked.  Meaning that so long as your gTLD can be considered something that can be tracked or found as a source of information you’ve met this criteria.

2. Prior Registration of your Business Name as a Trademark or Copyright

You should have already registered your operating business name under that is extended by the .com, .org or .net etc. with the USPTO for a potential trademark or copyright.  If you haven’t yet registered your company name with the USPTO for a trademark or copyright, then it’s unlikely you’ll be able to register you domain name for a trademark or copyright before then.

3. Provide Proof that your gTLD will be perceived as a Trademark

According to the USPTO “Because consumers are so highly conditioned and may be predisposed to view gTLDs as non-source indicating, the applicant must show that consumers already will be so familiar with the wording as a mark that they will transfer the source recognition even to the domain-name registry operator and registrar services. ”

Marketing or advertising material that specifically advertises the gTLD address should be submitted as should data relating to the amount of time and money you spent on such advertising campaigns.

4. Have a Registry Agreement with ICANN

Just because you’ve registered a domain through your names provider (like godaddy.com or netfirms.com) doesn’t necessarily mean that you have an agreement with ICANN.  Moreover, as the trademark/copyright applicant you need to be the person/entity that is named as the registrant of the domain name.  So if you operate a site, then you can only the be person who, by ICANN, is registered as the domain owner, if your company is the operator, then it must be the registrant.  This “chain of title” issue will become more difficult if you have purchased sites and the registration has not been properly transferred to you by ICANN or if you have used a registration agent in the past.

5. Provide a Legitimate Service for the Benefit of Others

According to the US Trademark Act in order for a service to be considered legitimate, it must primarily benefit someone other than the applicant (owner).  So this means that as the registered domain operator you’ll need to provide evidence that the use of the domain is for the benefit of others including:

  • that you intend to use the gTLD as a trademark
  • describe how the gTLD will target industries or consumers
  • describe if other gTLD’s will be registered and used under the same trademark (i.e. .bus, .fin, .xxx, .info, etc.)

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So what wouldn’t quality for a Trademark or Copyright?

Domain names that were used for internal purposes would not qualify.  So a company intranet domain name could not receive a trademark or copyright.   But a domain name used as portal for external suppliers or affiliates could receive a trademark or copyright.

Our final thoughts…

With the creation of ICANN’s hundreds of new gTLDs, securing your main domain personification and brand development will become even more important for all sorts of entities.  This does not necessarily mean that you should go out and buy all the potential domain names available (a common parking strategy), but instead could choose, in the US at least, to trademark or copyright your main brand name and its associated gTLDs.  Before engaging in such a strategy you should, of course, check with your local patent and trademark agent to ensure that you meet all the criteria mentioned above (don’t know one… send me a note and I’ll make an intro).

Allowing you to create trademarks and copyrights of your TLDs will strengthen your Intellectual Property Assets and increase their overall value as the rights enured from these marks allow their owners to provide for broad enforcement actions.  We think that the USPTO is on the right track with this process and believe that the benefits far outweigh the costs for both online and offline companies.

 

What’s that Worth?

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As I’ve been making the rounds to various connections discussing the new direction that we’ve taken with our business, I get asked the question, why would I pay for a valuation analysis or report when I can do one myself or my investment consultant/bank will do one for me?  So here’s the short answer: because you won’t know what it’s really worth.

I’m not making a self-ingratiating pitch for my services when I say this, I really mean it.  If you or your investment consultant/banker try to pitch the value of your business to a potential purchaser or investor, they’re going to most likely ignore the work and create their own estimate of value.  I know.. I’ve been that Investor.

While on the buy-side, I recall a case where a family had hired a credible independent consultant to assist them with their extraction of the division that they started from their troubled parent.  Not only did this consultant put together a proper financial package (including a proper DCF model), he completed a valuation and transaction structure that made sense.  My colleague who worked on the deal with me felt that it was the best transaction we had seen all year (and we had seen hundreds by this time).  We didn’t have to go digging for all the problems or challenges with the transaction because they were described to us in the consultant’s valuation report (we of course verified the details).   Our investment committee passed on this deal (arrgghh!), but I ran into the CEO a few years ago and he told me that he got his deal done, the way he wanted and was extremely happy with the transaction and the performance of this consultant.

While it’s true that you and your team have a better sense as to what your business is really worth than anyone, this is not the true fair market value, it’s what we call value-to-owner.   

As for your investment banker, well what can I say, they’re certainly in a better position to expose the fair market value but in most cases, they are paid on the successful completion of a transaction and could be considered biased by whomever you’re seeking funds from.  And frankly, the work I have found from most sell-side investment firms is lacking in depth and clarity.

Here’s something else that I learned from my 109 year old grandfather… you get what you pay for.  So if you’re doing your valuation internally, the output is only as good as your team (which I’m sure is awesome) and if you’re relying on an Ibanker or consultant, who is paid on contingency, then the numbers are harder for skeptical investors to believe.

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A lot of the VCs and PE Investors with whom I keep in touch routinely talk about how their primary criteria for their initial investment are 1) Quality/Credibility of the Management Team and 2) Quality of Assets.  The quality of the market opportunity is a distant third; most of these successful and sophisticated investors know that it takes the Intellectual Property and the smarts of a good team to create long term value.  That’s what they’re really betting on, not a specific product or market opportunity.

So why not have someone take a look at this?  I know, you don’t want to spend any dough.  I get it, I’ve been there.  But you know what? If you’re serious about that transaction or capital raise, you’ll have a lot more credibility to have a proper calculation or opinion of value completed by a competent, independent, third-party.  The actual cost is significantly less than the amount of the capital raise or transaction and can be used for multiple purposes (if you request such).  Oh unless you’re a large multi-national conglomerate, then the cost is certainly less than those success or placement fees you’ll be soon paying.

If you’re dead serious about growing your business with smart money or getting out altogether… the value of an independent assessment of business’ value is worth way more than the actual cost, it gives you a basis to begin negotiations and shows investors that you’re serious about completing this deal.

Don’t believe me?  Go raise your capital or complete your buy-out without an independent valuation and then next time call me, I’ll do the valuation and when you get better terms as result we can talk about how you’ll pay.