HomeWebcastHow to Effectively Monetize Your Patent Portfolio: Tips and Strategies Explored!
Online CLE Patent Portfolio CLE

How to Effectively Monetize Your Patent Portfolio: Tips and Strategies Explored!

Live Webcast Date: Wednesday, April 24, 2019 from 12:00 pm to 2:00 pm (ET)
CLE Intellectual Property LawRecording

Online CLE Patent Portfolio

Patent monetization has now become a key consideration for most companies as licensing and selling their patents can actually generate more revenue. However, due to the evolving Intellectual Property (IP) landscape, companies are faced with a more complex patent valuation process. Erroneous patent analysis could incur potential dilemma significantly affecting business assets. Thus, it is imperative for companies to ensure a doable strategic approach to maximize the potential of their intellectual property.

In this Webcast, a panel of distinguished professionals and thought leaders will help companies and patent owners understand the important aspects of this significant topic. Speakers will provide an in-depth discussion of current risk issues surrounding Patent Portfolio Monetization. They will also offer best strategies to effectively and efficiently monetize a patent portfolio.

Key topics include:

  • Patent Portfolio Monetization: An Overview
  • Current Trends and Developments
  • Modes of Monetization
  • Risks Issues and Pitfalls
  • Best Patent Valuation Strategies
  • Legal and Economic Considerations

Agenda

SEGMENT 1:
Edward A. Pennington, Partner
Smith, Gambrell & Russell, LLP

How To Monetize Patents:

  • When You Own Over 1,000 Patents: Fortune 500 Patentees
    • Scrub, Negotiate with Proof Package, and Sue If Necessary
    • Sell Patents Outside Your Competitive Zone
  • When You Own Between 10 and 1,000 Patents: Mid-Sized, Practicing Entities
    • Funded Litigation
    • Contingency Fee Litigation
    • Self Funded Litigation
  • When You Own Between 1 and 10 Patents: Non-Practicing Entities
    • Funded Litigation
    • Contingency Fee Litigation

How To Avoid Negative Blow Back When Monetizing Patents

  • Attorney’s Fees And Costs Verses Damage Award: The Right Risk/Reward Ratio
  • Fee Reversal For Prevailing Parties
  • When To Hold, When to Fold: Tips On Negotiating Settlements

SEGMENT 2:
Holly Ying Li, Partner
CKR Law

HYL’s Cross-Border and Legal/Business Perspectives

  1. Do you need to go to courts to monetize your patents?
    1. Pros and Cons of orchestrating a patent litigation:
      1. Pros:
      2. Cons
    2. Alternatives
  2. What do you need to monetize your patents?
    1. The importance of well funded IP management and enforcement mechanism
    2. How to use your own portfolio to fund your monetization business
  3. What are the alternative avenues to monetize your patent to avoid lengthy litigations and possible blow back?
    1. Cross-border litigations
    2. Diversified litigation tactics:
      1. Pooling
      2. Standard essential organization
      3. IP Fund
  4. Lending, securitization and insurance and banking:
    1. Traditional collateral lending
    2. Block chain and ICO IP trading system
  5. Sublicenses and other alternative models explored.

Who Should Attend

  • Patent Lawyers & Consultants
  • Patent Licensing Attorneys
  • Patent Owners
  • Patent Portfolio Managers
  • Patent Litigators
  • Heads of Patent, Trademark, Brand Protection & Anti-Counterfeiting
  • Technology Law Attorneys
  • Top Level Management
  • Private and Public Companies
  • Multinational Companies
  • Other Related and Interested Professionals

Online CLE Patent Portfolio

SEGMENT 1:
Edward A. Pennington, Partner
Smith, Gambrell & Russell, LLP

How To Monetize Patents:

  • When You Own Over 1,000 Patents: Fortune 500 Patentees
    • Scrub, Negotiate with Proof Package, and Sue If Necessary
    • Sell Patents Outside Your Competitive Zone
  • When You Own Between 10 and 1,000 Patents: Mid-Sized, Practicing Entities
    • Funded Litigation
    • Contingency Fee Litigation
    • Self Funded Litigation
  • When You Own Between 1 and 10 Patents: Non-Practicing Entities
    • Funded Litigation
    • Contingency Fee Litigation

How To Avoid Negative Blow Back When Monetizing Patents

  • Attorney’s Fees And Costs Verses Damage Award: The Right Risk/Reward Ratio
  • Fee Reversal For Prevailing Parties
  • When To Hold, When to Fold: Tips On Negotiating Settlements

SEGMENT 2:
Holly Ying Li, Partner
CKR Law

HYL’s Cross-Border and Legal/Business Perspectives

  1. Do you need to go to courts to monetize your patents?
    1. Pros and Cons of orchestrating a patent litigation:
      1. Pros:
      2. Cons
    2. Alternatives
  2. What do you need to monetize your patents?
    1. The importance of well funded IP management and enforcement mechanism
    2. How to use your own portfolio to fund your monetization business
  3. What are the alternative avenues to monetize your patent to avoid lengthy litigations and possible blow back?
    1. Cross-border litigations
    2. Diversified litigation tactics:
      1. Pooling
      2. Standard essential organization
      3. IP Fund
  4. Lending, securitization and insurance and banking:
    1. Traditional collateral lending
    2. Block chain and ICO IP trading system
  5. Sublicenses and other alternative models explored.

Online CLE Patent Portfolio

Online CLE Patent Portfolio

Edward A. PenningtonPartnerSmith, Gambrell & Russell, LLP

Edward A. Pennington is a Partner in the Intellectual Property Practice of Smith, Gambrell & Russell, LLP.  Mr. Pennington has worked exclusively in the field of intellectual property for close to 30 years.  During that time he has successfully tried many jury cases to verdict, both on the plaintiff’s side and the defense, in a wide range of technical fields including biotechnology, wireless communication and networking, computer architecture and hardware, software implementing a wide variety of functionality, navigation devices, encryption and cryptography, medical devices, automotive components, ceramic materials and metal alloys, and nuclear engineering.   While most of his litigation occurs in federal court, he has tried royalty disputes in state court, and has tried patent cases in the International Trade Commission.  His clients over the years have included major universities, U.S. governmental research laboratories, Fortune 50 companies, and independent inventors. 

Online CLE Patent Portfolio

Holly Ying LiPartnerCKR Law

Holly Ying Li has over 2 decades of experience in cross-border intellectual property practices, focusing on cross-border IP litigations, strategic advice, licensing, IPR's offensive and defensive proceedings, patent assertions, prosecutions, portfolio management, asset acquisitions, monetization and commercialization; start up formation and venture capital funding.  She started her career as a patent and technology licensing manager at Lucent Technologies (now Nokia) and subsequently, embarked her law firm career with Baker & McKenzie and Quinn Emanuel, where she honed her patent drafting, prosecution, opinion, assertion, infringement defense, patent litigation, and cross-border IP dispute resolution skills.  She then headed up an IP group in a leading tech company where she successfully managed the corporation's worldwide IP portfolios and grew the value of its patent assets by implementing a series of winning patent monetization strategies worldwide.  She represents clients in a wide range of industries, ranging from optical networking, AI, semiconductors, IoT, block chain to fashion companies.

Online CLE Patent Portfolio

Course Level:
   Intermediate

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

Prerequisite:
   Experience in intellectual property valuation

Course Code:
   147732

NY Category of CLE Credit:
   Areas of Professional Practice

Total Credits:
    2.0 CLE

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About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

Smith, Gambrell & Russell, LLP is a full service, international law firm that advises regional, national and global businesses and individuals on a wide range of legal matters. The Firm’s attorneys provide legal counsel in more than 45 specialized practice areas, including corporate transactions, litigation, intellectual property, aviation, banking, construction and employment law.

Founded in 1893, Smith, Gambrell & Russell serves corporate counsel and corporations across the globe from offices in Atlanta, Georgia; Austin, Texas; Jacksonville, Florida; London, U.K.; Los Angeles, California; Munich, Germany; New York, New York; Southampton, U.K.; and Washington, D.C.

The firm’s innovative professionals thrive on providing clients with guidance and support to achieve their business goals by offering a comprehensive, diverse range of commercial and business-oriented services. Our client profile includes large and mid-sized, public and private, and domestic and international companies, in a variety of industries. SGR distinguishes itself on three factors: predictability, responsiveness and value.

Website: http://www.sgrlaw.com/

CKR Law LLP is a dynamic and rapidly growing law firm. The firm represents a global clientele that includes U.S. and foreign publicly-listed and privately-held corporations, emerging companies in a wide variety of industries, entrepreneurs, institutional investors, and individuals. 

Since its inception in 2014, CKR Law has grown exponentially, from a handful of attorneys in 2014 to a firm today that boasts more than 150 attorneys in the U.S. and more than 350 affiliated attorneys around the world. The firm today operates, through various legal and affiliated entities, in more than 50 locations worldwide, including North America, South America, Africa, Asia Pacific, Europe, Latin America and the Caribbean, and the Middle East.

Website: https://www.ckrlaw.com/

Edward A. Pennington is a Partner in the Intellectual Property Practice of Smith, Gambrell & Russell, LLP.  Mr. Pennington has worked exclusively in the field of intellectual property for close to 30 years.  During that time he has successfully tried many jury cases to verdict, both on the plaintiff’s side and the defense, in a wide range of technical fields including biotechnology, wireless communication and networking, computer architecture and hardware, software implementing a wide variety of functionality, navigation devices, encryption and cryptography, medical devices, automotive components, ceramic materials and metal alloys, and nuclear engineering.   While most of his litigation occurs in federal court, he has tried royalty disputes in state court, and has tried patent cases in the International Trade Commission.  His clients over the years have included major universities, U.S. governmental research laboratories, Fortune 50 companies, and independent inventors. 

Holly Ying Li has over 2 decades of experience in cross-border intellectual property practices, focusing on cross-border IP litigations, strategic advice, licensing, IPR's offensive and defensive proceedings, patent assertions, prosecutions, portfolio management, asset acquisitions, monetization and commercialization; start up formation and venture capital funding.  She started her career as a patent and technology licensing manager at Lucent Technologies (now Nokia) and subsequently, embarked her law firm career with Baker & McKenzie and Quinn Emanuel, where she honed her patent drafting, prosecution, opinion, assertion, infringement defense, patent litigation, and cross-border IP dispute resolution skills.  She then headed up an IP group in a leading tech company where she successfully managed the corporation's worldwide IP portfolios and grew the value of its patent assets by implementing a series of winning patent monetization strategies worldwide.  She represents clients in a wide range of industries, ranging from optical networking, AI, semiconductors, IoT, block chain to fashion companies.

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