Chance of FTO Suits

The next segmentation of the portfolio is into core & supporting technology portfolios that will be used for freedom to operate (FTO) countersuit negotiations.  Not every business environment is filled with honorable competitors. There are times when a company, despite its best efforts, is faced with a lawsuit. The chance of this happening can be determined by looking at the litigation and opposition history is shown in the “Chance Of FTO Suits” figure.

It is important for a company to understand and plan for the possible time and expense key personnel will need to expend to address patent prosecution (such as opposition) and litigation events. As the environment surrounding a company’s core and supporting technology portfolios is continuously changing, a company should conduct quarterly assessments to keep abreast of such activities and the participants engaged in them.

When specific threats are found, preparation for FTO counter-suit negotiations should use the techniques described herein for in-licensing negotiations. The core and supporting technology portfolios are so evaluated for such a purpose, and high-value art (when viewed in this light) is kept in the company’s portfolio as a reserve for this potential purpose.

Many companies are interested in obtaining additional revenues from their patent portfolios by licensing-out their art to others. Licensing Executives Society members have found that a critical stumbling block to these activities is that internal licensing groups must first obtain permission to license from business unit’s general managers. These GMs are appropriately concerned that licensing-out any technology might jeopardize the protected advantaged revenue and profit streams they now enjoy.

To alleviate this valid concern, it is typical that only two business use types be subject to licensing-out activities. (1) Stranded technology portfolio art to be licensed to anyone, and (2) Supporting technology portfolio art to be licensed selectively.