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Patent Pruning: IP Portfolio Management

Patent Pruning: IP Portfolio Management

 

IP valuation best practicesThe value of a business includes both its ability to perform and the combined value of the assets it holds. Distinguishing profit-driving assets from cost-drivers and working to balance the scale increases the overall value of the business. Thorough IP valuation and IP management practices continuously align intellectual property portfolios with business objectives.

Intellectual property (“IP”) is a significant set of assets including patents, trademarks, copyrights, and trade secrets, among others. For many businesses, applying for and maintaining patents are some of the largest IP-related costs. In evaluating a patent portfolio, each of the individual patents must be independently evaluated for relevance to the current core offerings of the business and overall strength. Bloated IP portfolios can be costly to maintain. The maintenance and attorney fees associated with sustaining the rights to unused or under-utilized technologies is a constant reality and the result can be a decrease in the amount of resources available for new patent acquisition or research and development of new technologies.

A comprehensive IP valuation can help the business to make informed decisions regarding which IP assets to shed and which technology areas to strengthen. For instance, perhaps there are patents in the portfolio that, while not necessarily applicable to the current business objectives, may be of value to other businesses. A decision to sell IP that falls into this category may help offset the costs associated with maintaining an IP portfolio and can help establish a leaner, more focused IP model for your company.

Pruning is the practice of trimming a plant’s diseased and damaged branches or buds in order to promote the growth of the healthy leaves and flowers. Analyzing your IP portfolio to determine key value drivers and identify those items that may fall outside the goals of the business increases the potential value of the business and can free resources.

Pruning can be a dangerous task—no one wants to excise the wrong asset. Often it takes multi-industry experts to see the potential value of a patent in a completely different area than the current business. Expert consultation is highly recommended before abandoning patents or letting any or IP expire. However, like horticulture, IP valuation processes performed by skilled experts can help identify and eliminate inefficiency that will hopefully generate solid new business growth.

Practices that identify and prune under-utilized and unused patents from your IP portfolio are but a small piece of IP management. Working with industry and technological experts is incredibly valuable in creating and maintaining a plan for your IP. Understanding the value of the individual components that comprise the whole can aid in determining which items should be maintained and which should be under consideration to be cut.

Ready to learn more about IP valuation and how to apply solid IP management practices to your portfolio? Contact the patent portfolio experts at TechPats today.








 


When To Sell: 3 Patent Monetization Strategies For The Savvy Investor

When To Sell: 3 Patent Monetization Strategies For The Savvy Investor

 

ROIAs a savvy investor, you understand that simply owning intellectual property is not going to make you a dime. When it comes to patent monetization and profiting from your intellectual property, you have three choices:

• Litigate to protect your IP
• License the usage rights
• Sell the patents

Selling patents ensures a quick payoff for your technology. But, how do you know when the time is ripe to generate substantial profits from selling patents in your IP portfolio?

1. Sell If … The Technology Is Not Core To Your Business

Conduct a portfolio assessment and determine if you have any number of patents that are redundant or not essential to your overall business goals. If you are holding intellectual property that is not core to your business, but may be valuable to others, it is wise to sell those non-essential assets.

Some firms may be willing to pay top dollar for the technology. This way, you shed the costly endeavor associated with starting up a business based on a new product.

2. Sell If … The Technology’s Life Cycle Is Waning

Patents have a life span. As a technology’s life cycle is nearing the end of its relevancy, the value of a patent starts dwindling in the last five or so years of its life. Selling before a patent gets to this point is often wise.

As with any investment, you need to know the marketplace extraordinarily well. With in-depth knowledge of the market and some foresight into the future landscape of technology, you are able to conduct a patent assessment and successfully determine a patent’s remaining relevancy.

Patent selling is effective once you know that a piece of technology in your IP portfolio is fading in relevancy. However, depending on where your intellectual property is at in its life cycle, patent monetization may be better achieved by marketing the technology to other investors who are willing to bring the new product to consumers.

3. Sell If … You Do Not Want To Endure Costly Patent Litigation

After conducting a patent assessment, you may come to understand you have patent infringers on certain key technologies in your IP portfolio. In this scenario, you either have to enter patent litigation or pursue patent selling.

If you feel you don’t have the tolerance for risk or funds associated with prolonged patent litigation, patent selling is a very viable option. Non-practicing entities (NPEs) and other companies welcome the opportunity to acquire intellectual property for little else than to sue. Patent trolls are a contentious topic, but they are an option for patent monetization.

Although you may be tempted to sell patents quickly, effective patent selling begins and ends with a strong IP strategy. Any successful patent monetization effort requires a lot of analysis and research to find the right buyer so you reap the most reward.

Ready to learn more about selling patents with the right strategy to achieve the most from your patent monetization efforts? Contact the patent monetization experts at TechPats today.


3 Intellectual Property Lawsuits Every Business Owner Should Understand

3 Intellectual Property Lawsuits Every Business Owner Should Understand

 

Intellectual property lawsuits are a reality of maintaining a productive IP portfolio. As one facet of your patent monetization efforts, you should be prepared to actively protect your patents – via legal proceedings, if necessary – to ensure other companies don’t use your patented invention to earn revenue.

Patent litigation requires an understanding of some of the landmark standards that have been seen in major, recent intellectual property lawsuits. The following three lawsuits have changed the game for patent infringement, licensing and injunctions.

1. Microsoft v. i4i: Supreme Court Rules Against Microsoft

If you are a smaller company experiencing patent infringement from enterprise organizations, you do not have to accept being pushed around the playing field.

Back in 2011, there was a high-profile intellectual property lawsuit in which the Supreme Court unanimously upheld a lower court ruling that software behemoth Microsoft infringed the patents of a small Canadian company, i4i. The ruling hinged on the strength of the presumption of “validity” for claims of a patent allowed by the USPTO.

Although Microsoft attempted to paint i4i as a “patent troll,” the small company withstood the legal fees and came out on top. An alleged infringer needs to show “clear and convincing” evidence in order to invalidate the claim in question at trial. Microsoft was forced to pay out $290 million for patent infringement.

If Microsoft had won the intellectual property lawsuit, however, it would have established a new precedent making it easier to invalidate a patent.

2. Ebay v. MercExchange: No Guarantee Of Injunction

Once you’ve proven before the court that someone has infringed upon your intellectual property, that doesn’t necessarily mean you are granted an injunction so they permanently cease infringing.

Back in 2000, eBay began negotiations to outright purchase MercExchange’s online auction IP portfolio – eBay had already been using practices from their patents at the time. Sometime in the middle of negotiations, eBay abandoned the purchasing effort and MercExchange sued eBay for patent infringement … and won.

After the verdict, MercExchange sought an injunction to prevent eBay’s continued use of its intellectual property. This time, the District Court denied their request. However, the Federal Circuit reversed the District Court, stating there was a “general rule that courts will issue permanent injunctions against patent infringement absent of exceptional circumstances.”

That being said, the Supreme Court ultimately overturned the Federal Circuit’s approval of the injunction, determining that an injunction should not be automatically issued based on a finding of patent infringement. Then, it also ruled that District Court originally erred in denying an injunction based on the fact that MercExchange does not practice their patented invention.

3. Microsoft v. Motorola: Jury Puts End to Patent Shenanigans

Not all intellectual property lawsuits are about patent infringement.

Back in 2011, Google bought Motorola Mobility for $12 billion. Many say the motivation of this purchase was Motorola’s IP portfolio – Google wanted to use it to fight back against certain Microsoft lawsuits. However, the Western District Court of Washington instructed Motorola to pay Microsoft $14.5 million for abusing those patent royalties by refusing to license standards-essential, “FRAND” patents at reasonable terms.

The verdict in this intellectual property lawsuit was a landmark decision and contributed to a growing list of regulators and courts sending the message that the best patent policies encourages use of patented, standards-essential subject matter paired with reasonable and non-discriminatory licensing practices.

Patent litigation simply comes with the territory of effectively managing your IP portfolio. However, there’s nothing simple about intellectual property lawsuits.

Whether you have in-house or outside counsel to guide your legal proceedings, it’s incredibly helpful to partner with a patent litigation support team that allows your legal team to focus on patent law by offering comprehensive support in the technical and legal aspects of a patent infringement lawsuit. Pre-trial planning, reverse engineering, invalidity analysis and excellent technical experts make all the difference in a verdict.

Ready to learn more about intellectual property lawsuits and find the right patent litigation support? Contact TechPats today.


Patent Mining: 3 Tips To Successfully Navigate The Crowded IP Marketplace

Patent Mining: 3 Tips To Successfully Navigate The Crowded IP Marketplace

 

navigate crowded marketplaceDo you want to make marked improvements to your company’s bottom line while also maximizing shareholder value? Patent mining, coupled with methods for extracting value from your IP portfolio, is capable of producing very positive results.

Fifteen years ago, corporate income from patent licensing in the U.S. was at $15 billion. Today, the sum of U.S.corporate income that results from patent licensing exceeds $100 billion.

An effective patent mining program involves searching for valuable opportunities for your intellectual property, such as:

  • New applications of technology
  • New markets for the technology
  • Extensions of the technology
  • Patent infringement candidates
  • Hot technology or divisions for joint ventures

Portfolio assessment and patent mining is a proven process for uncovering the hidden gems within your IP portfolio. However, you need to avoid the pitfalls when attempting to successfully navigate the crowded patent mining marketplace.

The following three tips help to ensure you take the most solid path for patent mining that results in profitability:

1. Know The Processes Of Patent Mining

Patent mining may be done manually or automatically – both process have their shortcomings.

Automated tools are not a guaranteed strategy for patent mining, as there is no way to ensure that no stone is left unturned. These tools often miss applications of a technology across other industries. Manual patent mining is a very deliberate, thoughtful process, but it takes a long time, and is therefore also an expensive process.

The most beneficial patent mining process for uncovering your intellectual property gems is to partner with a firm that has a proven method of iteratively mining IP portfolios.

2. Understand That You Get What You Pay For

The CFO of your firm might find cost-containing appeal in cheap offshore patent mining services. However, offshoring your IP services comes with many issues:

Does the offshore organization follow processes to maintain confidentiality and have a sufficient amount of insurance coverage? Are they current with U.S. case law? This list of questions concerning the practices of offshore patent mining goes on and on…

The point is, with offshore patent mining, you receive no guarantee that those miners have anywhere close to decades of industry experience or comprehensive knowledge of a technological space.

3. Look For A Firm With Balanced Patent Mining Experience

It is important to ensure the firm you partner with for patent mining and portfolio assessment employs talented people with years of experience.

A great question to ask any intellectual property consulting firm is if their talent is in-house or through contractors. If the consulting firm employs an endless army of patent mining contractors, those contractors may work to a different set of standards from your own.

The potential to mine gold from your IP portfolio is great. But, you must partner with the right intellectual property consulting firm: one that approaches your portfolio assessment and patent mining with hard-won expertise.

A proven track record, along with a comprehensive approach to patent mining, ensures you are going to extract the most income for your company in the most efficient manner.

Ready to learn more about a capable intellectual property consulting firm that puts into practice the best methods for patent mining? Contact the patent mining experts at TechPats today.


Top 5 Proven IP Valuation Insights And Best Practices

Top 5 Proven IP Valuation Insights And Best Practices

IP valuation best practicesTo make the most of your key technologies and the opportunities in front of your organization, accurate and effective IP valuation is vital.

However, IP valuation is a complex process due to the interminable variation of underlying technologies, legal issues, business issues and the context in which they are conducted.

To ensure your intellectual property serves your business strategy, you must avoid churning out patents without a plan. The following five points are proven best practices when it comes to patent valuation.

1. Conduct Patent Portfolio Mining

Over the years, your IP portfolio may become overstuffed with valuable patents, and it is important to mine them for improved company revenue. Companies that neglect their IP portfolio are wasting money. Which patents are no longer relevant to your business strategy?

To discover which patents in your portfolio are relevant and which are not, have an IP valuation expert conduct patent portfolio mining. Having your patents mined helps you to see where and how your patents apply to industries and technologies. Patent portfolio mining clears up the clutter of your IP portfolio and may also help you find potential buyers for your unused patents.

2. Partner With Patent Portfolio Management Experts

Bringing on an IP consulting firm, one that fully comprehends the industry and the technology that they are valuating, is important for your organization. These experts are made up of engineers and analysts with years of industry experience.

With their high level of experience, an IP consulting firm helps you identify, evaluate, capture and protect valuable IP assets. Their invaluable knowledge of IP valuation is what helps you create a robust and effective IP strategy.

3. Perform Comprehensive Market Analyses

Another effective way to conduct IP valuation is to have your IP consulting firm perform comprehensive market analysis to determine where your technology stacks up amongst your competitors.

Market analysis is a methodology that involves determining what a buyer is willing to pay for similar intellectual property. This comes by ascertaining if there’s an active market for the patent, or a similar one, and also if there have been past transactions of comparable property.

4. Determine Your Patents’ Life Cycle

Most investors aren’t going to be interested in a patent that has limited years of relevance or patent protection left. On the other hand, with a recently issued patent, the technology has not properly matures and there is no potential to litigate at that time.

That is why it is important to understand where your technology exists in its life cycle. Generally speaking, it is better to acquire a patent after it has been proven useful in the marketplace.

5. Take Timing Into Consideration

Technology changes rapidly, which affects the value of your patents. The values of your patents are going to fluctuate, depending on how old they are and how relevant they are.

You may need to sit on your patent for several years, even a decade, and wait for technology to catch up. Conversely, waiting too long means you may have a hard time attracting demand. Your IP consulting firm helps you navigate the ever-changing tide of technology.

IP valuation requires in-depth knowledge of relevant technologies, market conditions and patent law. Along with this understanding is the ability to bring many facts and considerations together to build an argument for why a patent has value. Patent valuation is not only a function of revenue, but also a matter of timing and the other strategic benefits it may yield.

Ready to learn more about proven best practices for mining patent gold? Contact the IP valuation experts at TechPats today.


IP Management: 5.5 Critical Reasons You Need An IP Consulting Firm

IP Management: 5.5 Critical Reasons You Need An IP Consulting Firm

Intellectual property means much more than just innovative inventions and patents. To realize and enable different income streams, your IP portfolio must be properly managed to safeguard proprietary technologies and help maintain a competitive advantage in the marketplace, while also attracting interest and investments.

An IP consulting firm is an important ally when building or strengthening your patent monetization efforts.

Partnering with an IP consulting firm go hand-in-hand with a robust IP strategy that aims to identify, evaluate, capture, protect and attain valuable IP assets. Here’s why:

1. You Find Engineers And Analysts With Years Of Experience

A good IP consulting firm has engineers and analysts with years, if not decades, of industry experience. They know how to take a 30,000-foot view of your patents and their related technology, but are also able to get up close and identify key patents that form the basis for a solid patent monetization strategy.

2. You Secure The Absolute Best Blueprint For Patent Monetization

As a leader of your corporation, you do not necessarily have the dedicated resources it takes to develop a comprehensive roadmap for successful IP management.  When you partner with an IP consulting firm, they are focused fully on realizing the potential of your IP portfolio, leaving no stone unturned. With an underlying awareness for integrated, exhaustive patent mining, the right IP consulting firm gives you the absolute best blueprint for patent monetization.

3. You Easily Adapt To Industry Trends For Strategic IP Management

Industry, technology and applications are ever changing, and it is often difficult for company leaders to stay ahead of the curve where the future of their patents are concerned. To truly get the most from your IP portfolio, it requires strategic IP management that is best attained with an experienced IP consulting firm that’s able to predict future industry trends. This high level of strategic patenting is going to give your company an edge over competitors.

4. You Gain Reverse Engineering Services And Teardown Capabilities

When your company faces competitor threats to your intellectual property, you need patent litigation support. The right IP consulting firm has reverse engineering services with experts in technology teardown tactics. The evidence these experts uncover is commonly a deciding factor in court.

5. You Receive Patent Litigation Support For Legal Proceedings

Whether you are protecting your IP against infringers or defending your products against the infringement claims of competitors, an IP consulting firm provides highly experienced patent litigation support services to work with either in-house or outside counsel. The firm acts as a silent partner for legal counsel. With attorneys on staff, the firm understands the position that you may be stuck in and tailors the work product for use by those acting in a legal capacity.

5.5. You Get Efficiency And Value

Effective IP management requires a quick, proactive team to get through a portfolio, comply with a docket or find EoU. When you partner with an IP consulting firm, they provide all the IP services you need, as they have the team already built and ready to go to work. This level of efficiency and expertise equals value by saving your time and money both in the short- and long-term.

While providing your business with a proactive approach to IP management, an IP consulting firm also assists in mitigating significant risks resulting from poorly considered or reactive approaches to patent monetization.

Ready to partner with the right IP consulting firm and receive long-term, successful IP management for your corporation? Contact the patent experts at TechPats today.