Intellectual Asset Management Services
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• Portfolio Mapping - A service involving organizing and setting forth the logical and functional relationships between an organization’s issued patents, pending applications, trade secrets and other know. The purpose of this activity is to provide an organization’s management with meaningful information to help them achieve one or more of the following goals: (1) help identify gaps and weaknesses; (2) more effective allocation of patent prosecution, maintenance and other resources; (3) more effectively coordinating the IP function with an organization’s R & D, product development and marketing strategy:
  • Organizing and grouping patents by technology area.
  • Linking issued patents with related pending applications.
  • Identifying which issued patents, and pending applications, are actually being practiced by existing products and services.
  • Identifying and linking U.S. and foreign patent protection.
  • Identifying the logical links between R & D activity, and issued patents and pending applications.
  • Identifying unpatented trade secrets and other know how that are still available for and could benefit from patent protection.
  • Identifying which issued patents and pending applications are not being practiced by existing product and services, and do not have a logical link to any ongoing R & D Activity.
  • Weighting or ranking patents by importance in the portfolio, this would be a somewhat arbitrary calculation that would be achieved by assigning weights to patents based on whether they are issued or pending, whether they are being practiced, the relative value of good or service to the ongoing business of the client, the relative value of the linked R & D activity, the relative value of the technology area, the breadth of allowed claims and the expiration date of issued patents.

  • Developing short meaningful verbal descriptions of patents and pending applications, containing key words that have meaning in the clients business and the relevant technology area. These descriptions could be used to convey information in spreadsheets and other reports, and perhaps as another tool to assist in organizing and understanding the logical relationship between properties in the portfolio.

• Portfolio Mining – This is a process of taking an organized approach to a portfolio, in an effort to extract value. Value can be extracted in any one of the following ways: (1) generating revenue by license; (2) generating revenue by sale; (3) obtaining tax deductions by charitable contribution; (4) achieving cost reduction through abandonment. While it would be preferable to have a Portfolio Mapping Service as described above completed first, that is not necessary. However if a Portfolio mapping Service has not been completed, the client does need to be able to identify which properties they are willing to consider for license or sale. This service could involve:

  • Identification of specific IP assets as core and non-core to the client’s business. Core assets have a much higher value and importance to the business, and will most likely be assets that are used in significant existing products or services, or are associated with significant R & D. Non-Core assets are assets that are not used or are associated with products or services that are not lucrative or are otherwise peripheral to the client’s business. These are important differentiations, because core assets will probably only be available for license, and then to a limited horizon of licensees (i.e. non-competitors). Generally there is more flexibility with the disposition of Non-Core assets, and those assets may be subject to license or sale, even to competitors, and to charitable contribution or abandonment.
  • Objective assessment as to the on-going costs associated with the prosecution and maintenance of specific assets.
  • Make specific recommendations with regard to ongoing prosecution activity, to improve the client’s ability to generate revenue from its portfolio.
  • Identification of potential licensees and/or purchasers of specific assets. This will involve defined patent research techniques, as well as general business, product and market research.
  • Identification and preliminary valuation of assets to be considered for charitable donation.
  • Identification of assets to be considered for abandonment, including information of the cost savings associated with that abandonment.
  • Negotiation and drafting of appropriate agreements or other necessary paperwork to accomplish a license, sale, charitable donation or abandonment.

• In-Licensing – Assisting clients in identifying and acquiring assets that may be of value to them. In addition to the expertise we can bring to the table, there are other advantages to the client in having an independent third party assist in this type of activity. This service could involve:
  • Analysis of the client’s portfolio to identify gaps, needed enhancements and potential infringement problems.
  • Identify third party assets that meet client’s needs, and identify the owners of those assets.
  • Research whether the assets can be acquired in a manner that is more affordable, such as cross licensing.
  • Assist with asset valuation and appropriate pricing.
  • Contact owners of the assets on the client’s behalf.
  • Negotiate and draft appropriate licensing and sale agreements.

• Competitive Analysis – A service for clients that would involve research and analysis of their competitor’s IP portfolios to provide the client with competitive intelligence and information to improve and strengthen the client’s portfolio. This service could involve:
  • Identify assets held by competitors.
  • Group the competitor’s assets by technology area.
  • Rank the competitors assets by relative strength and value.
  • Prepare a short meaningful synopsis of the higher ranked competitor assets.
  • Make specific recommendations with regard to ongoing prosecution activity, to improve the client’s position with regard to their competitors.

• Infringement Licensing and Enforcement – Investigate and analyze potential infringement situations, with a eye toward accomplishing one of the following goals: (1) determining that there is not a valid infringement claim; (2) resolving the matter by entering into a licensing arrangement acceptable to the client; (3) resolve the matter by persuading the infringer to withdraw from the marketplace; or (4) Prepare the case and litigate it. This service could involve:
  • Gather all available information on the infringing matter.
  • Prepare a claims map of the client’s patent.
  • Conduct an infringement analysis.
  • Conduct a damage assessment.
  • Develop a licensing and litigation strategy.
  • Contact the infringer and attempt to negotiate a licensing arrangement, or withdrawal of the infringing matter from the marketplace.
  • Prepare a formal infringement opinion. Litigate the matter.