Posts Tagged: "patent portfolio management"

To keep pace with competitors, businesses must constantly monitor, adjust, and streamline their patent portfolios. Doing so ensures that portfolios deliver the maximum potential return on investment by staying aligned with corporate goals, industry and technology developments, and growth areas across industries and businesses. This process requires managers to adjust the makeup their portfolios to maintain effective coverage in specific areas and eliminate or reduce low-value patents to minimize maintenance… There are four goals that can be achieved through portfolio audits: streamlining portfolios; ensuring portfolios are well-positioned, positioning portfolios for optimal monetization, and ensuring the portfolio provides sufficient coverage without excess. Portfolio audits may help identify strengths and gaps.

The Supreme Court has agreed to hear a petition for Certiorari in Oil States Energy Services v. Greene’s Energy Group, which will result in the Court addressing the constitutionality of post grant proceedings… The impact of the resulting decision in this case may affect patent dispute outcomes not just moving forward, but possibly spanning 5 years into the past… At a (very) high level, there are three possible outcomes arising from the Supreme Court decision that is expected in 2018 that will impact the IPR process: no change, some change, major change.

Eventually Congress will recognize that all the changes enacted to address the overblown patent troll issue has resulted in far more damage to U.S. competitiveness. This revelation, unfortunately, will take time as the old patent troll narrative is still being cited on the Hill. In the interim, inventors and U.S. companies need to re-evaluate their IP protection strategy… Too often the reaction to losing portfolio value is to decrease investment in the portfolio. That is the wrong approach. More effort and investment need to be made to identify key assets, perform thorough prior art searches and draft applications/claims that can withstand an IPR petition. Keep a patent application family alive with very diverse claim strategies for these key assets.

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.

While patent portfolios are entering the market other patent portfolios continue to leave the market having been purchased. Asking prices seem to have also reached an equilibrium point, according to Kent Richardson of the ROL Group. There are buyers on the market looking for good portfolios, both tech companies who themselves have thin patent portfolios who are looking to back-fill their portfolios. Some non-practicing entities that had previously left the market have also started to come back as buyers over the last 12 to 18 months, at least kicking tires and strategically acquiring where the assets are strong and the price is right.

While many, if not most, enterprises have instituted, and are executing, an IP strategy of some sort, an important question should be considered: Is the IP strategy optimal, such that its execution extracts maximum value from company technology? Some corporate IP strategies may seem sound in theory, but in practice they are (a) selectively or inconsistently applied within or across projects, (b) incompatible with how teams actually work, (c) relatively narrow in how they perceive innovation, and (d) distracting to innovators and IP practitioners while consuming enormous resources. Ultimately, the return on IP investment of such strategies may be questionable. However, enterprises that periodically take a step back to reflect on their current IP strategies, and recalibrate them if appropriate, are likely to derive the greatest possible value from IP.

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.

What is the best way to assess the potential value or use of a patent portfolio? Before we examine this, it’s important to clarify that a patent only has value in the context of its place in a portfolio and in how the portfolio is used to support the organization’s business strategy. Let’s look at two examples. A Patent Assertion Entity will evaluate patent value based solely on the potential revenue that will come from a licensing program. On the other hand, an operating company typically places a higher value on patents that provide protection. This can be the ability to defend leadership in a profitable market category or the ability to offer protection as a sole-sourced product’s revenue stream.

What causes operating companies to sell their patents? Our intuition tells us that patent sales take place when the seller is in financial distress or the company is underperforming. We asked ourselves whether data aligned with our intuition… 71% of the sales occurred when the seller underperformed the overall market by more than 5 percentage points.

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.…

To maximize the return on investment from a patent portfolio, patent owners must determine which is more lucrative: sales or licensing. In general, patent licensing promises the highest total return on monetizing an IP portfolio because the IP owner can license the same asset or (a single patent or portfolio) to a number of different licensees. On the other hand, it may take three to five years to realize significant revenue from licensing. Additionally, licensing comes with a host of potential risks including litigation, invalidity arguments, and more. More and more frequently patent sales/transfers are part of licensing settlements to ensure there is more of a ‘win/win’ result for negotiating parties.

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.