Chris Agrawal is President of the Association of Intellectual Property Firms (AIPF) and partner at Bookoff McAndrews.  He was instrumental in one of the biggest patent transactions in history and the reason Eli Mazour [Clause 8’s host] got into patent law in the first place. If you’re a startup founder or an executive at a growth stage company worrying about patent protection or wondering how to scale your patent program, download and listen to this episode today.

On how AIPF helped IP firms navigate the pandemic:

I was really thankful to have the association because we were all talking with each other and sharing information about what we were doing. And so it was really helpful as the pandemic was hitting – in late February and early March of 2020 – [to be] talking to each other about what we were seeing internationally from our clients, from other firms.

Learn how Chris approaches building a valuable portfolio of patents:

The first place I start is looking at the business. What does the business look like today? And what do they need first and foremost? And then from there, start looking at more of the nice to haves. Is there something else where there’s real revenue, but it’s really not connected to our business? Where can we turn the portfolio itself into an asset separate from our business?

How he thinks about monetizing valuable patents:

In general, you start to map out the market. The first place you look at with any deal is who are the infringers? What does the market look like for these claims? Who needs the claims? Who’s practicing the claims? And what does that market look like? Who are the big players? And also, who is in need of a portfolio like this?

Finding the right balance for the client relying on outside counsel:

There’s this kind of dance that will happen at certain points in prosecution with an examiner where you have to kind of really quickly make some decisions on the fly about what deals to make with an examiner . . .how to change scope here and there a little bit.  I think ideally you want to empower your outside counsel to be able to have a little bit of leeway with examiners so that, so that that dance can happen.

I think it’s really powerful if you can empower your counsel to do that.

For all this and more, don’t miss Chris Agrawal on this week’s episode of Clause 8.

On this episode:

• Perspective as AIPF’s president on how firms have been able to succeed over the last year
• Building and selling $1 billion patent portfolio
• Prosecuting old patent applications that read on new technologies
• Scaling a patent portfolio for startups and growth stage companies
• Strategically thinking about role of in-house IP counsel
• Unique challenges of handling patent prosecution work
• Priceless advice to law firm attorneys
• Staying on top of patents as GC