Posts Tagged: "patent portfolio creation"

When the corporate asserter arrived at our client’s door, the asserter wanted: (1) to obtain both a cross-license and revenue from a patent license and (2) to increase our client’s purchases of the asserter’s products. Our client had virtually no patents of its own. To shift the negotiation, the decision was made to purchase defensive patents (counter-assertion patents). The reasons were that invalidating the asserter’s 10,000+ patents would be expensive and would take too long. Also, putting revenue from the asserter’s products and services at risk would change the dynamic of the negotiations to our client’s benefit.

In this post, we’ll analyze LinkedIn’s patent acquisition process and the results of its targeted buying program. While the increase in LinkedIn’s filings helped to grow the total patent portfolio, challenges remain. First, while organic filings tend to focus on LinkedIn’s core technology and therefore help a great deal with counter-assertion against potential competitors, they are less helpful when it comes to large corporate asserters further outside LinkedIn’s core technology area. Second, the priority dates on all the new filings are recent (after 2011). Earlier priority dates (old inventions) help the most in counter-assertion, but LinkedIn would have had to file for those patents in the 2000s. Fortunately, the market for buying and selling patents is robust and allows companies to fill in where they have weakness in their portfolios. Focused patent buying allowed us to build a counter-assertion portfolio to help bolster any negotiations.

When it comes to making strategic patent portfolio decisions, it is more important than ever to be informed, thorough and discriminating with your decision-making. In short, the number of strategic decisions available to those obtaining and maintaining a portfolio are greater than ever and, in fact, have only continued to explode in number. So many strategic decisions to consider throughout the innovation lifecycle, where should you start? Join me, Carlo Cotrone (GE Oil & Gas) and Edmund White (CPA Global) for a free webinar on Thursday, June 1 at 2PM ET.

When it comes to making patent portfolio decisions, it’s important to be strategic. But with so many strategic decisions to consider throughout the innovation lifecycle, where should you start? Join Gene Quinn, patent attorney and founder of IPWatchdog.com, and a panel of experts for a free webinar on Thursday, June 1 at 2PM ET.

Patents confer rights and when you have rights you have an asset that can be sold or licensed. But you will have an asset that can in some circumstances be sold or licensed even before you actually obtain a patent. Increasingly more and more companies are looking for outside ideas and inventors can and do strike deals before a patent is issued. It is true, however, that the further you are down the path toward a final solution being real the more valuable your invention will be. With this in mind, there may be instances where getting some patent protection quickly could be beneficial. This article discusses several strategies for more quickly obtaining a patent.

Join me on Thursday, January 26, 2017, at 12pm ET for a free webinar discussion that will focus on decision making for dealmakers. This free webinar will approach this material first from the lens of the dealmaker who needs to know that they have all the relevant information necessary to confidently assess value and close a deal. We will ask, and answer, the question about which information can prove to be most useful and why. We will then pivot the discussion to bring in data experts to discuss how they work to find that information and deliver it as actionable intelligence so that good decisions are made with good data.

Companies at the cutting edge of their industries have realized the immense value of their patent portfolios and are still trying to make the most of that value – but it is not easy. A semiconductor or electronics company can have tens of thousands of patents; finding the patents that are the most valuable is one of its biggest problems. These patents are needed to determine the strategy for patent sale, licensing or litigation, and without them the company is basically stuck and can’t move forward. The process is like sorting the grain from the chaff.

Over the past 18 months, our clients have begun to show greater interest in international patents (e.g. non-US). Increasing client interest in international patents corresponds with the general rise in importance of international patents (continuing ascension of the Chinese market, potential for unitary patent for Europe), more anti-patent owner decisions in the US, and greater patent litigation outside the US.…

My view is we have reached a time of strategic purchasing that we not seen or experienced previously. Here’s why: If you want to know the future, technically, you can’t. But, if you’d like to know about the patent property rights regarding future technologies, it’s easy. The patent applications being filed now and already issued will be those that are asserted over the next two decades. If your tech company hopes to be a part of that future, buying into that future, now, makes a certain amount of sense. It is only a question of price. Budgets are being put together, right now, to develop the contours of future technologies by virtue of R&D, acquisition of competitors, and targeting markets and products; it is reasonable that the very same budgeting process should be in place for acquisition of rights. Certainly budgets for patent filing are in place – these should include acquisition as well.

There are a few things that we notice when we look at the patent portfolios originated from the universities. There is no rule that applies to every single university but there are definitely trends that one can spot quickly. For example, universities tend not to file many continuation applications, and instead let patent applications issue out. When the only patent application in the family issues, the prosecution is closed, and there is no ability to file continuation applications. We also don’t see enough attention to portfolio pruning as a way of containing cost. Universities engage in very early stage research, which is speculative by its nature, and therefore many patent applications are filed on technologies that do not turn out to have significant economic value later on. This is a very good recipe for accumulating patents with little or no value.

An organization’s overall IP strategy should support business strategies and help increase the value of the company. IP strategy will be different depending on the business and market. Value is not always about how much money can be generated by patents. Companies may want to motivate employees; attract customers, attract business partners or investors; protect existing products and the ability to improve them in the future; block or intimidate the competition; license to improve market penetration, generate income or gain access to third-party technology; improve their return on investment, or generate income or savings through joint-ventures, mergers and acquisitions, or investing in start-ups, among other strategic IP goals. Truly valuable patents are rare. Studies show that fewer than 5% of patents in a typical technology patent portfolio are valuable. Finding these rare valuable patents in a large patent portfolio is a challenging task.

The first patent is typically filed prior to entering the market. This prophetic patent might have several different ways a product may be designed and capture a couple different ways the product may go to market. The purpose of the first patent application is to clear some space so that the company can keep competitors away. This patent application is done with the highest degree of uncertainty about both the technology and the market. It is critical to note that not only is the entrepreneur just beginning the journey at this point, but so is the patent attorney. Neither player knows which elements of the invention will turn out to be important.

Today’s pace of innovation and competitive intensity demand greater protection of new ideas and inventions. Yet intellectual property (IP) management is not a high business priority for many companies. Organizations that fail to recognize IP as a strategic asset put their competitive advantage and profit margins at risk. Companies can circumvent these potentially adverse impacts by maximizing the value of their creativity. Prioritizing and protecting IP assets helps organizations stay in front of competitors and drive greater growth.

Although the job of developing the patent portfolio never ends, once the assets begin to reach a critical mass it becomes equally important to tactically manage the portfolio. Because if not managed properly, a patent portfolio will not only fail to generate revenue, it will also drain the company coffers. With this in mind it is essential to know thy portfolio, prune thy portfolio and monetize thy portfolio. When many think of patent monetization, patent sales and licensing (in and out of court) are what come to mind, but there have been a slew of anti-patent court decisions that patent owners need to consider before monetizing. Crisis is often said to spawn opportunity and the patent world is no different. Uncertainty in the litigation arena has spawned new, non-litigation offerings to innovators desirous of leveraging the value of their patents.