Posts Tagged: "patent strategy"

Join Gene Quinn on Thursday, September 27, 2018, for a free webinar discussion on the important topic of streamlining the patent prosecution process and stretching a patent budget efficiently. Joining Gene will be Stuart Recher, Vice President of IP Services for Clarivate Analytics.

A decent patent strategy starts with protecting your current commercial product.  A better patent strategy builds on this by not only considering what is, but what could be.  To provide real value, consider the actions of others and invest time studying the patent landscape and gathering business intelligence from competitors’ filings.  Additionally, instead of passively observing such filings, a company should also consider being more active by filing one or more third-party submissions (often termed preissuance submissions) in their competitor’s pending applications.  These third-party submissions are a terrific defensive tool to slow down or impede your competitors’ patent ambitions.

Gene Quinn, has been named to the 2018 IAM Strategy 300, which recognizes The World’s Leading IP Strategists. This marks the second consecutive year Gene has been recognized by IAM as one of the top IP strategists in the world.

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?

Join Gene Quinn, patent attorney and publisher of IPWatchdog.com, on Thursday, February 8, 2018, at 12pm ET, for a discussion on patent prosecution strategy. Joining Gene will be Russ Slifer, former Deputy Director of the U.S. Patent and Trademark Office and current partner with Schwegman Lundberg & Woessner, and Bernie Tomsa, a patent attorney and shareholder with Brooks Kushman.

When managing many of cross-licensing negotiations it can be hard to prioritize your activities. In a recent case, the client experienced this very thing and felt they would benefit from a clear overview of their efforts… Determining the risk potential from a given licensor required us to look at several variables. Steps 1-4 of Figure 2 focus on assessing the strength of the infringement case presented by the opposing company. Finally, in step 5, we estimate the impact of that case on our client’s revenues based on the number of evidence of use (EOU) materials still in the case. Based on these assumptions, we calculate the total potential risk to our client.

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.

IPWatchdog is pleased to announce that IPWatchdog Founder, Gene Quinn, has been named to the 2017 IAM Strategy 300, which recognizes The World’s Leading IP Strategists. The award honors industry professionals who are changing the ways in which intellectual property is protected and managed, raising the bar on the practice of patent, trade secret, trademark and copyright law, and leading innovation in the field. The minimum requirement for inclusion in the guide is three nominations from outside the individual’s own organization, with nominees being thoroughly reviewed and vetted by an IAM committee.

“It’s not very helpful to talk about quality,” said former Chief Judge Michel. We agree. Quality has too many meanings for too many people. We all want quality patents, but we do not agree on what quality means. A better objective for patent strategy and patent management is the pursuit of valuable patents. “But wait!” you say, “Isn’t ‘valuable’ just…

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.

Patenting the distinctive technological features that drive demand for your products and services will make your patent portfolio more valuable by creating a link, or nexus, between your patent portfolio and your products. You can use this nexus to exploit your patents by preventing your competitors from including the most valuable features of your products in their own products without your permission; commanding a higher royalty if you license your patents; increasing your chances of getting an injunction if you need to enforce your patents;
increasing your damages base if you enforce your patents; and defending against an obviousness attack on your patents’ validity by showing that the patented features increased your market share.

The required number of patents in a given playbook varies based on both the size of company of concern and our exposure to it. The general goal of a playbook is to shift the licensing amount purportedly owed by LinkedIn by $20 million to $200 million in our favor. In order to achieve this, we have found that a good playbook should contain between three and 10 patent families, with evidence of use for key patents. The goal of each playbook is to show infringement by the asserter’s products and services exceeding $1 billion revenue. We set specific goals for each one and tested its contents against them.

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.