An interview with Jackie Hutter, Chief IP Strategist of The Hutter Group
Jackie Hutter is innovating in the legal space by pushing the boundaries of her profession to meet the needs of modern businesses. She’s claimed the license plate “UNLAWYR” because her approach to patents and intellectual property (IP) protection is unusual in her field. “The vast majority of my peers, unfortunately, don’t get what I do, or more significantly, why what they’re doing may not serve their clients.”
Jackie has observed that most lawyers think innovation means making changes to their existing law firm business models. “What they don’t realize is that their customers are increasingly dissatisfied with these longstanding legal service frameworks and are starting to look for alternatives.”
As Jackie started down the path of IP strategy, she also spent time as a startup entrepreneur for a few years; during that time, she lived and breathed Lean Startup, and now brings that mindset to her IP efforts. She describes the legal field as one where professionals are incentivized to be the expert. “If I admit as an expert that I need to change, then I may be seen as having given bad advice in the past. Then I haven’t been doing my job well. Lawyers are not typically learning individuals, because it’s hard to admit the need to improve.” She believes this environment is largely why legal tools have failed to keep pace with the needs of innovators.
“I grew up in Miami in the ‘bad old days’ with a father who saw it all as an FBI agent. Being from a place where either the weather or the people were trying to kill you gave me an evolve-or-die approach to the world.”
That evolution involved addressing the mismatch between the value innovators are providing to the world and how IP attorneys approach protecting that value. “Innovators are changing things to cause a meaningful shift. Nonetheless, they end up hiring lawyers who have not changed the way they generate IP protection. For my clients, patent protection may make the difference between success or failure. But for IP attorneys, all IP may be equal in that they will get paid the same whether they succeed or fail. There often is no accountability in my business.”
In the realm of IP protection, Jackie believes innovation is putting protections in place that make it cheaper to go through a company than around it. From the vantage point of Jackie’s responsibility as an IP Strategist, a critical feature in achieving the most appropriate IP protection is having the IP person in the room from day one. “I tell clients if you’re in the innovation business and call your IP person to tell them what you’ve accomplished already, you’re too late.”
More than a patent attorney
When I asked Jackie about the difference between her work and that of a patent attorney, she described it like this: “Patent attorneys do things. They’re very tactical. They ask: What did you invent? I am a strategist, and the hallmark of strategy is figuring out where you want to be at the end of the process and working backward.”
“I am a strategist and the hallmark of strategy is figuring out where you want to be at the end of the process and working backward.”
Jackie limits her client base to companies that can demonstrate they have a customer, and they know how to monetize their customer. “I have seen so many smaller companies spend money and effort in generating patent protection that doesn’t align with a validated business model, which means the patent is worthless.. If a patent doesn’t cover something people will pay for, it doesn’t matter how much your lawyer charged you for it.”
Jackie’s process includes leveraging her skills as a patent attorney in parallel with her IP strategy work. “When I onboard a new client, I want to understand whether patents matter in this environment or not.” She analyzes the incumbent companies getting patents in the same space, but the primary focus is not whether or not her client infringes on those patents. With all the patents that exist in many emerging technology areas, it could often be too hard to know for sure.
Instead, she coaches her clients to move forward with their work to solve pressing needs, meanwhile filing essential patents on their customer solutions, and not on merely a specific technology offering. “It leads to lots of optionality in the future because we’re thinking about where technology might go, not just filing on what we’ve already invented.”
Patents that consider the future state
Jackie’s clients are looking for something different because they are different. They’re innovators. “They need to look for somebody who looks at IP differently because the only person guaranteed to make money on a patent is a patent attorney. 95% or more patents don’t make money for a business.”
When filing patents, Jackie thinks beyond what the solution covers now and includes areas where the technology might go in the future. “You never patent for yourself; you patent for who you want to value those patents. And like you don’t dress for the job you have, you dress for the job you want. You patent for the exit value you want.”
“You patent for the exit value you want.”
For startups trying to compete with well-established companies, there’s always a risk that they might be sued or shut down for infringing on some existing patent on a shelf. But the reward can outweigh the risk, particularly for those startups that are solving problems that established companies can’t solve themselves.
Jackie’s startup clients file broad patents on solutions that they’ll likely never enforce in court themselves. Rather, her clients’ patents are viewed as currency for sale or trade. “Patents are a seat at the table that you might not have otherwise had and serve as a virtue signal that you have a little technology.” The right patents demonstrate to well-funded incumbent companies that a startup team knows the value of their offering. “When somebody partners with us or buys us for some huge multiple, they now have a package of patents that allow them to own the market relative to their competitors.”
“The right patents demonstrate to well-funded incumbent companies that a startup team knows the value of their offering.”
Technology enables the customer outcome
Jackie’s innovation silver bullet involves elevating the business team over the technologists in the beginning conversations and making sure the IP strategist is looped in early.
“When you get two technical people together, it’s a mind-meld. Everybody’s happy and comfortable. But this is not about being comfortable. This is about having the right amount of friction to end up with the right result. We’re focused on the customer who’s going to write a check for what you’re doing and why. The technology should only enable that outcome, not be the outcome that is patented.”
Three questions for IP strategy
When it comes to IP strategy, Jackie says there are three crucial questions:
- Should you get a patent?
- What should I patent?
- Who should you hire based on the answers to #1 & #2?
Whether or not you should get a patent largely depends upon what your business is, what your goals are, and what your resources are today. What should be patented becomes more critical for smaller companies like startups where there’s one chance to get it right. Nailing the proper patent can make or break their opportunity for an exit.
In describing who companies should hire for their patents, Jackie uses the metaphor of an architect and a contractor. “Most patent attorneys are contractors. They’ll build what you tell them to build. If you want something that’s going to generate value over the long-term, or a particular desired outcome, you’re going to hire an architect.”
“If you want something that’s going to generate value over the long-term, or a particular desired outcome, you’re going to hire an architect.”
Patent trolls
There’s one school of thought that patents can get in the way of early-stage ventures through patent-trolling. This phenomenon can create distaste for some start-up founders to even think about patents. However, Jackie believes the actual impact of patent-trolling is more minor than it’s presented. “Patent trolls were part of the narrative that companies like Google and the like wanted to make so that their lobbyists could go to Congress and get the rules changed. Recent analysis has shown that they were effective because litigation by non-practicing entities — or ‘trolls’ as they are often called — has decreased in the past few years.”
Jackie encourages her clients to be aware of patents that exist, but not to let worries over infringement prevent them from executing on innovative solutions.
Jackie encourages her clients to be aware of patents that exist, but not to let worries over hypothetical infringement paralyze them into inaction that can prevent innovative solutions from making it to consumers. “I would never tell a client not to do an infringement search. But when somebody says they’re worried about the patents out there first and foremost, I say ‘You could do nothing, or you could act like an entrepreneur and take the risk.’ If you are creating value to a consumer in the marketplace, you’re going to find a way to be rewarded.”
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