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 [...]
A key question facing executives when they are about to license-out an intellectual property portfolio is “What’s the true value of these assets and who should I license them to so that I further my business objectives?” Answering this question in a timely and accurate manner is vitally important. The ability to quickly [...]
Step 1. Perform an intellectual asset inventory and mapping. Ideally this should have already been done to ensure there are enough high-quality intellectual assets to make a licensing out program worthwhile. Step 2. Evaluate opportunities through technology and market analysis and evaluation. Again, the preliminary work should have already been done by using [...]
Step 3: Determining Ultimate Value Though quantitative tools provide evaluation/pricing starting point, they must be used in conjunction with careful evaluation of qualitative factors to ultimately determine fair market value. Those factors are instructive as to a fair split of excess benefits between the negotiating parties. As well, and the actual budget constrained, [...]
Qualitative Factors in IP Valuation Step 2: Applying Approaches Assuming the availability of adequate data, income approaches often provide the most useful measure of value. Of particular significance is incremental income approach, which compares the intellectual asset covered returns with the returns the next best alternative. Products or services containing unique intellectual [...]
Given this background of the three general methods of valuation, the process of valuation of intellectual assets thus proceeds in several steps: Step One: Choose An Approach Optimally, an intellectual asset valuation, just like valuation performed when selling a home, should employ each of the three approaches noted above. Data and information [...]
More effective internal use of patents is usually the reason a company undertakes a portfolio mining process. But in addition the company may discover opportunities to: enforce patents against infringers(companies that are using protected technologies either deliberately or unwittingly); license out technologies that have value to other companies; seek complementary technology in order [...]
Typically the process and building a robust intellectual property inventory database is to identify and catalog various forms of registered intellectual property assets (patents, trademarks, copyrights, trade secrets) contained within existing legal department documents. Cataloging should accumulate business information such as each assets non-technical description, current or intended use and stage of development. [...]
Protection of Intellectual Assets – Conversion To Protected Intellectual Property Assets Protecting intellectual assets is often accomplished by converting them into one of four types of intellectual property. The distinction is that intellectual property is an asset class whose rights are carefully defined and if violated can be litigated in a court of [...]
Specific Activities and Questions of the Due Diligence Process The above checklists help a team engaged in due diligence make sure they have covered all their bases. Asking questions is one thing, finding a quick way to get solid answers is another. The following examples show how items described in the IP due [...]
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