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When Joseph Siino came on board as Yahoo! Inc.’s first vice president of intellectual property in February 2005, the company was seeking a different approach to managing IP assets. The Sunnyvale, Calif., company needed to quickly transform itself from Internet portal to digital-media company in order to compete with fellow giants such as Google and Microsoft. It needed to leverage its IP assets to generate and distribute media content. Siino’s job was to figure out a way to use and expand the company’s growing portfolio of trademarks, copyrights, and patents to build business partnerships with any company that could provide Yahoo with valuable digital content and products. “My job was to create a whole new department around IP asset management that . . . would help identify business opportunities, strategic alliances, and possible new products,” says Siino. That doesn’t exactly sound like a job for a lawyer, but Siino, who spent a few years as an IP consultant after he left now-defunct Brobeck, Phleger & Harrison in 2002, appears to be pulling it off. “A lot of companies talk about wanting to leverage their IP assets the way Yahoo is doing it, but you rarely see it being done,” says Joseph Yang, a Silicon Valley IP consultant. “Most companies over time have developed a large IP portfolio, and they’re lucky because their sheer numbers give them a lot of good patents, but what Yahoo is doing is trying to bring business intelligence into it.” LET’S MAKE A DEAL In the 17 months Siino has been on the job, Yahoo’s IP asset management team has played a key role in a number of joint ventures and product-development strategies that the company hopes will give it a critical edge. Last year, Yahoo signed a $1 billion joint venture with global-trade manager Alibaba.com to create China’s largest Internet company, which spans the online worlds of search, commerce, and communications. In December, Yahoo joined forces with Seven Network, one of Australia’s largest media companies, to launch Yahoo!7, a version of the Web portal focusing on video and print stories from Seven’s news division. Yahoo won’t disclose the dollar value of the deal, but offers that it’s hard to price a venture that may help Yahoo dominate Australia’s Web media market. Yahoo has also struck recent deals with other Internet companies, such as eBay, to develop new services for its users. In a deal announced in May, Yahoo said it will place graphical and text advertising on eBay. In return, eBay, the world’s biggest e-commerce company, will offer its PayPal payment service on the Yahoo site. All of these deals, according to Siino, have major IP components. “The way we look at it is that Yahoo has a bundle of technology IP rights that can be useful in helping other companies in achieving their business goals,” he explains. “Hollywood and media are the same way. Content is but a set of IP rights which is licensed in one way or another.” Siino adds, “If you put all these together, you have convergence.” Which is exactly what Yahoo general counsel Michael Callahan wanted from Yahoo’s IP unit when he hired Siino. “There’s a traditional structure of IP departments built around patent filing and patent litigation. While I’m sure that’s effective in a lot of places, we really needed something else,” Callahan says. “I wanted a division that is plugged into the management team and helps in the creation of business, product development, and commercial transactions.” So far, he says, the company has made major strides in achieving that vision. “Joe has assembled, in my view, a top-notch team, and he has helped us really marry IP closely into our business structure,” Callahan says. POOLING TALENTS Siino, who spent his first month trying to learn all aspects of Yahoo’s business, managed to integrate his team into the company’s management and business departments by introducing simple but innovative measures. Early on, he created an IP board of directors. The board pools the talents and expertise of senior business and technology leaders within the company to help guide its overall IP strategy. Siino also put together an IP creation group that helps engineers and scientists focus on areas in which the company wants to develop products or services. “The best way to really strategically integrate IP into the company itself is to involve [others] within that company,” Siino says. He also expanded Yahoo! Research Labs, a joint project with U.S. universities including Stanford University, Santa Clara University, and the University of California-Berkeley, by opening other research facilities around the world. “Our primary incentive here is to be involved with and share expertise with great thinkers and innovators,” Siino says. “Fostering innovation and being a part of it is a goal in itself.” Michael Jacobs, a patent-litigation partner in the San Francisco office of Morrison & Foerster, praises Yahoo’s efforts. “The important point is that IP strategy is not a sideline . . . but it has become much more central to a company’s direction,” Jacobs says. So far, Siino’s plan to foster more innovation within the company seems to be succeeding. He says that since he came on board, the company’s patent portfolio has more than doubled. How well these innovations serve Yahoo in its cutthroat competition for users and the ad revenue they generate remains to be seen, but it’s clear Siino has created a compelling model for the future of IP. “I think we’ve built one of the premier IP departments already in slightly more than a year, and we’ll just continue to grow,” says Siino.
Xenia P. Kobylarz is a reporter for The Recorder , an ALM publication based in San Francisco where this article first ran.

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