Posts Tagged: "Value"

IPWatchdog readers know the importance of capturing IP, whether it is patents, trademarks, copyrights, or trade secrets. This article isn’t detailing technical tips for filing patents or how to corner a strategic area of the market; the difference between a good and a great IP Manager is leadership. Capturing IP is one of many responsibilities of the IP Manager that falls in the middle of functional silos within technology companies, resulting in cross-functional barriers that must be navigated to achieve any measure of success. While the goal is to create a strong IP portfolio, the business is people. When in the middle of functional silos, the IP Manager often relies on influence, not authority, to overcome cross-functional barriers. This requires true leadership.

As the new year begins, I’ve been reflecting on what makes patent practitioners highly valuable to their clients. In a prior IPWatchdog article, I asserted that one should aspire to practice as an intellectual property counselor—who leverages patent prosecution as one strategic tool among many, rather than narrowly conceptualizing his or her role. What about the day-to-day acts of preparing and prosecuting a patent application? Here are ten concrete steps IP counselors can take to advance their clients’ interests and distinguish themselves from their peers.

Suppose you are valuing a large patent portfolio with issued patents and pending applications in more than 20 countries throughout the world. One of your tasks would be to project how much royalties each patent could collect in each of the subject countries over time. After plotting out your expected revenue streams, you would have to apply a discount rate to these projected royalty revenue streams to reflect the risks associated with entering into governing licensing agreements. Which risks are embodied in discount rates (also known as costs of capital)?

10,000+ patents, spending $10M’s per year, cross-licenses, and license potential with dozens of companies, what’s the value of the portfolio to the business? Is your patent strategy valuable to your company? How? OK, tag you are it, what is the answer? The problem seems intractable. In previous articles, we have discussed how to determine your general patent risk and how to put a number on it. But where do you start when you are trying to estimate the value of your patent strategy?

Alice has had an impact on software patents, but they still hold significant value. If your portfolio includes software patents, there will be times when you want to extract value from that portion of your portfolio. As with any patent, there are three key criteria that must be applied when determining value: is it being used, is its use economically significant, and can that use be proven. Join Gene Quinn for a discussion about how to unlock the value of software patents in light of Alice.

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.

Enforcement of patents through litigation occurs when licensing has failed to result in an arms length negotiated resolution. In other words, patent owners resort to litigation when there is a market failure… When Keller says that the value of a patent is inextricably tied to the value obtainable through litigation that is just an economic truism. If the patent has no value when enforced in litigation, whether because the subject matter of the innovation has become patent ineligible, or because of a bias that tends toward finding practically everything obvious, the patent has no enforcement value. These litigation realities spill over into the business dealings because a patent that has no enforcement value will have necessarily have no licensing value.

Whether one celebrates or decries the PTAB, there can be little doubt that it has worked a profound effect on the value of American patents—and, concomitantly, on incentives to invest in research and development… Compared to their judicial counterparts, PTAB judges are biased in favor of invalidity. Personnel differences also explain a more disturbing phenomenon, mainly, that the Patent and Trademark Office seems to be at war with itself. Frequently, the PTAB invalidates claims based on prior art that examiners considered during initial prosecution. The only explanation for such discordant outcomes is that PTO examiners take a more pro-patent view of validity than the judges who make up the PTAB.

At first sight Amazon´s patent portfolio is indeed remarkable, with respect to its total value as well as its development over time: the total value of the company’s patent portfolio shows a strong over-proportional growth within the past six years. Starting 2010 with about 550 patent families and € 130m, the patents have reached a total value in September 2016 an impressive total sum of € 1,15b with 4,162 alive patent families. For a company being recognized as a retailer this is indeed remarkable and shows the trend of being more and more a high tech company. This can be seen within their strong increase of total patent portfolio value but also the technical analysis.

In many cases, the challenge of patent quality is reduced to questions of patent validity. However, in other cases, the quality of a patent depends on economic valuation, which is a market phenomenon. After all, if a patent lacks any value in market, why would infringers care about it at all? Only valuable patents that have market impact are directly attacked by incumbents. This observation leads to the revelation that all patent disputes are based, not on patent quality, but on patent valuation. In the main, most patents of high value are considered high quality inventions, with low quality inventions not having value in the market… The modern patent system originated in Venice. At first, it worked well. But eventually, a cartel of market incumbents exercised their market power, took over the system by modifying its rules and diminished the effectiveness of the patent system for their self-interest. The effects of these changes were disastrous as technological progress slowed and the economy floundered. We are seeing a repeat of this market phenomenon in the U.S.

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.

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.

Most patent professionals recognize that a raw count of the number of forward citations to a patent can be an indicator of a patent’s value. However, a mere count is insufficient because decoding the citations to support meaningful decisions is still a challenge. To further complicate matters, important and meaningful citations are virtually always underreported making them unavailable to patent analysts for consideration. This article reveals new data that may render traditional citation analysis inadequate, and discusses the who, what, and when of each citation as an important consideration when attempting to derive value from careful examination of the complete forward citation record.

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.