Patent Portfolio Monetization: Key Considerations for Companies in 2018 and Beyond
Companies worldwide consider Intellectual Property (IP) as one of their most valuable asset classes because of the substantial financial and strategic value that can be generated from IP monetization transactions and structures. However, determining the value of a patent portfolio has been a constant challenge for patent owners due to the increasing complexities in the IP environment.
With the considerable amount of both opportunity and uncertainty in the backdrop, businesses need to put a robust patent portfolio management strategy in place to be able to maximize profits and mitigate future risks or losses.
In this LIVE Webcast, a panel of distinguished professionals and thought leaders will help companies and patent owners understand the important aspects of this significant topic. They will provide an in-depth discussion of critical issues surrounding Patent Portfolio Monetization. Speakers will also offer best practices in improving patent quality and in developing and implementing effective portfolio monetization programs.
Key topics include:
- Current Patent Portfolio Monetization Trends
- Risks and Pitfalls
- Business, Legal and Other Considerations
- Best Patent Valuation Practices
- Impact of Recent Regulatory Developments
Abdullah (Ab) Rahal, Strategic Account Manager
Key point is around: “Best Practices to improve your chances for Successful Patent Monetization”
Patent Monetization: How to increase your chances of success.
Early Development: Development of a portfolio – early preparation
- Filing Applications vs Acquisition
- Value and Strengthening
Identifying Valuable Assets within your portfolio – determine value
- tools/metrics vs third party assessment
- Competitive and Market Intelligence – trends and whitespace
- Ongoing portfolio maintenance – continued Strengthening
Ready to make well-informed decisions about monetizing your portfolio
- enforce, sell, abandon
Adam J. Gilbert, Partner
Knobbe, Martens, Olson & Bear, LLP
- General Value Drivers
- Portfolio Status
- Patent Contents
- General Options
- Sell Patent
- Sell Company
- License Patent
- One Non-Option
- Assert Patent
- Mark Product
J. Derek Mason, Partner, Certified Licensing Professional
Oblon, McClelland, Maier & Neustadt, LLP
Key idea: How portfolio management components work together to build value
IP Management and Monetization: a Holistic View
Internal Conception, Creation, Capture and Growth – Building Value:
- Considerations prior to launching portfolio development
- Type of company
- Intended world markets
- Human Capital
Sale of IP:
- Mining your own portfolio - any Rembrandts, Picassos??
- Acquisition to complement existing patents for sale?
- Identifying potential licensing targets – search tools and considerations
- Who is “playing in the same space”
- Do they have something that you want as well? (cross-licensing considerations)
- Using litigation as part of licensing strategy
- Using litigation to protect your market – enhancing the value of your IP and market position
How the Pieces Work Together:
- Monetization can take multiple forms
- Licensing Revenue
- Revenue from IP Sale
- Damages revenue from litigation
- Licensing program backed by litigation
- Use of the components to “monetize” by increased market share
Who Should Attend:
- Patent Lawyers
- Patent Licensing Attorneys
- Patent Owners
- Patent Portfolio Managers
- Private and Public Companies
- Multinational Companies
- In-House Counsel
- Patent Consultants
- Patent Litigators
- Heads of Patent, Trademark, Brand Protection & Anti-Counterfeiting
- Other Related and Interested Professionals
Abdullah is a Strategic Account Manager at TechInsights working with IP groups of Fortune 500 clients to ensure they achieve their intellectual property objectives. He has over 23 years of experience in the fields of IP portfolio management, IP monetization, infringement analysis, IP landscape analysis, market analysis, and patent transactions, as well as extensive knowledge of the Microelectronics Industry.
Abdullah holds a BSc in Electrical Engineering with a specialty in microelectronics from Carleton University, and he is a current member of the IEEE.
Abdullah is a Strategic Account Manager at TechInsights working with IP groups of Fortune 500 clients to ensure they achieve …
Adam J. Gilbert is a partner in the Orange County office of Knobbe Martens.
Mr. Gilbert has over a decade of experience in strategic United States and international patent procurement, patent portfolio management, general counseling on infringement and licensing, competitive analysis, due diligence, and IP audits. Mr. Gilbert currently represents clients in a wide range of technologies, including medical devices, semiconductor fabrication, microelectromechanical systems (MEMS), chemical processes, and mechanical systems.
In the medical device field, Mr. Gilbert has worked extensively with emerging-growth companies in the cardiovascular, neurological, ophthalmic, and prosthetic fields. He represents multiple companies with catheter-based technologies in a variety of body lumens. Mr. Gilbert also has extensive experience in neuromodulation and tissue ablation. His technical experience in both chemical engineering and medtech yields a unique perspective in the strategic development and assessment of global patent portfolios.
In addition to representing medical device venture capital firms in high-stakes IP deals, Mr. Gilbert has also been involved in several successful acquisitions in the medtech field, representing both acquiring companies and targets.
Prior to law school, Mr. Gilbert worked as a photolithography process engineer, gaining broad experience in all aspects of semiconductor fabrication. He also has work experience in water purification systems and methods and environmental remediation.
Mr. Gilbert joined the firm in 2005.
Adam J. Gilbert is a partner in the Orange County office of Knobbe Martens. Mr. Gilbert has over a decade …
J. Derek Mason, Ph.D., CLP, a chemical industry IP attorney and Certified Licensing Professional, is a partner in the Chemical Patent Prosecution practice group, and co-chair of the IP Transactions practice group. Dr. Mason focuses his practice on patent preparation and prosecution, licensing, intellectual property issues arising in various types of corporate transactions, client counseling and opinions on various intellectual property issues.
A former chemist with a doctorate in organic chemistry, Dr. Mason works with both companies and other law firms, advising on a broad range of intellectual property concerns. He conducts due diligence investigations and risk assessment with respect to intellectual property ownership in corporate mergers and acquisitions. Additionally, he helps both foreign and domestic companies to establish and develop patent portfolios, avoid infringement when launching new products, and formulate and implement procedures to protect their innovations and enhance their use and value. He also counsels on creative design-around strategies, and the interplay of utility and design patents, trade-secret protection, and litigation avoidance.
J. Derek Mason, Ph.D., CLP, a chemical industry IP attorney and Certified Licensing Professional, is a partner in the Chemical …
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Method of Presentation:
Experience in intellectual property valuation
NY Category of CLE Credit:
Areas of Professional Practice
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For over a quarter-of-a-century, intellectual property teams and outside legal counsel have trusted TechInsights’ Intellectual Property Services to prove patent value and enable sound, fact-based IP decisions. Our Patent and Technology analysts have become an extension of some of the most advanced IP teams including 37 of the top 50 U.S. patent holders.
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Our clients use our insights to develop successful IP strategies that optimize the value of their patent portfolio, protect their competitive position, assert their IP or defend their position.
About Knobbe, Martens, Olson & Bear, LLP
Knobbe Martens is one of America's largest Intellectual Property firms —a team of smart, aggressive attorneys, scientists and technical experts committed to promoting and protecting innovation.
About Oblon, McClelland, Maier & Neustadt, LLP
Oblon is headquartered within steps of the United States Patent and Trademark Office (USPTO), and has an affiliate office in Tokyo, Japan. Oblon is one of the largest law firms in the United States focused exclusively on intellectual property law, with a patent prosecution practice that has obtained more U.S. utility patents than any other firm in the world for over 27 consecutive years.
Oblon’s IP Transactions group assists clients in a wide variety of projects: from acquisition or sale of intellectual property and due diligence in such deals, to licensing technology to or from other parties, to the development of internal documents and procedures for capturing and managing all forms of intellectual property. Oblon’s attorneys also collaborate with clients in identifying and taking advantage of opportunities to expand or exploit the client’s intellectual property rights.
With a business-minded approach, combined with the technical capability of its attorneys, Oblon is able to provide comprehensive transactional intellectual property services needed to succeed in the highly competitive world market. This comprehensive service is complemented by Oblon’s extensive experience in patent and trademark prosecution, which permits it to expertly counsel clients on issues that could value or devalue IP portfolios.
In addition to its renowned patent prosecution practice, the firm has a precedent-setting litigation practice, with extensive knowledge and experience in all aspects of complex intellectual property litigation involving patent, industrial design and trade secret disputes. Additionally, the firm's post-grant practitioners are some of the most experienced in the country. The Group routinely recovers patent portfolios made subject to post-grant disputes as a result of high-profile, concurrent litigation valued at hundreds of millions of dollars.