Risk Management of IP Assets

A property planned and effective patent awareness and risk policy is an essential component of corporate self-governance in today’s business environment. As part of the responsibility of self-governance, management must implement an effective patent risk management program and ensure that it is properly maintained over time. Periodic self-assessment is an important tool for [...]


Extracting Value from IP – Abandonment

It may seem unusual to consider abandonment as a value extraction process. However many forms of intellectual property in particular patents and trademarks require continued maintenance and registration fees over their lifetimes. Abandoning this art saves payment of these expenses as well as the companies cost of internal personnel auditing and properly tracking [...]


Extracting Value from IP – Donations

Like any other property, patents and know-how can be donated to a charity and a tax deduction taken. Transaction costs are variable but are usually small compared to the value of the tax deduction. The process includes identification of the assets to be donated, identification of the donee (which helps to maximize the [...]


Extracting Value from IP – IP Exchanges

Contributing intellectual property to IP exchanges is another way to obtain value from the assets.  Such exchanges came about nearly 2000s that have struggled to become sustainable business entities. The basic reason for this is that online exchanges, in order to thrive, have to solve transacting a company’s intellectual property better than alternate [...]


Extracting Value from IP – Spin-Outs

Spin outs are usually done by corporations where the new business is not directly part of their strategic intent or plan. The reason for spending it out however is that the new idea is usually powerful enough that the Corporation might consider a change in strategy if the venture succeeds.  The corporation wants [...]


Extracting Value from IP – Strategic Alliance

The strategic alliance is a business arrangement usually done in order to gain access to markets to which company would otherwise be denied. IP is often viewed as a sweetener for the deal. The process of selecting and valuing IP for such deals is again similar to that of licensing out in the [...]


Extracting Value from IP – Sale

Sale of intellectual property vis-a-vis licensing-out, provides a Corporation with essentially no ongoing liability or expenses.  The transfer of ownership is usually for a monetary consideration often paid upfront versus being extended over a long period of time (as is sometimes the case for licensed art). The maintenance and potential litigation expenses are [...]


Extracting Value from IP – Joint Ventures

Contributing IP rights to a research or business venture with another party again follows the process outlined above in the licensing-out section.  Since the other party will be contributing one or more complementary business assets in lieu of only monetary payments, these deals are more complicated to construct.  The variation from the licensing [...]


Fourth Step in Portfolio Mining Process for Licensing Revenue – Perform Deal Maintenance and Monitoring

Royalty Payment Audit Process The execution of a license agreement is not the conclusion of the licensing strategy. The "Royalty Payment Audit Process" figure shows the activities that should follow. After lengthy and difficult commercial negotiation many licensors and licensees don’t pay enough attention to the royalty clauses. The following 30 business terms [...]


Third Step in Portfolio Mining Process for Licensing Revenue – Negotiation Process Flowcharts

Licensing Negotiation Process Flowchart Once a proposal binder has been assembled that includes the aforementioned elements, the target company should be contacted. The “Licensing Negotiation Process Flowchart” figure shows the negotiation process. As one of the last steps in the negotiation process the value of the licensing deal is determined. As mentioned previously [...]

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