Recent statistics show that 90% of all startups will be on the receiving end of a third-party patent claim at some point during their existence. For larger companies, it is not a question of “if” but when. Patent risk mitigation is therefore a critical component of any business strategy. This includes removing potential liabilities that put a company at risk of infringing a third party’s intellectual property. Whether one is finalizing a product design, looking to enter into a new geographic market, expanding their current product offering or, as a startup, exploring the potential barriers to launch, one must assess the potential risk of infringement. The reality is that patent litigation is rampant and, in the U.S. alone, it costs up to $5M on average. Very few businesses can sustain these costs long enough to prove their position and will suffer from the resulting uncertainty and disruption during years of litigation. It is therefore paramount to understand if your business will be at risk of potentially infringing the IP of a third party and to mitigate this risk before it happens.  

A Freedom to Operate (FTO) analysis compares your actual or planned product or service to existing patents and pending patent applications in the same field. Our report encompasses a detailed review and analysis of hundreds of relevant patents (issued and pending) in any given market that could hinder your ability to launch or pursue the sale of a product, highlighting the most applicable ones. Our report allows you to discretely “design around” those relevant issued and pending patents, reconsider your Go-To-Market strategy, or procure a license to such patents at much lower costs … and therefore prevent possible litigation. In some cases, it is possible to license or acquire the patent(s) outright and anonymously via our brokerage services. Unlike others who send you a highly technical report that is not actionable without proper context, we always schedule a one-on-one meeting after receipt of our report to review the results in detail and answer any questions you may have.

Most businesses have no formal IP strategy to speak of; yet 90% or more of their valuation lies in their intangible assets. In the absence of a structured path to developing the IP, which includes improving upon current internal IP practices, most of those intangibles will go to waste. A comprehensive IP Strategy achieves core long-term IP goals including harvesting intangibles and preventing leakage of IP outside of the organization, turbocharging the innovation pipeline, protecting its brand or solidifying standard form agreements. In addition to conducting a deep review of internal practices, contracts and agreements, we also analyze all patents (issued or applied), trademarks, trade secrets, copyrights, software licenses and domain names the client may own. This is followed by interviews with relevant personnel to further validate or clarify our findings.

Using the results of this due diligence work and a very detailed analysis of your business, IP and competitive landscape, we thoroughly analyze your IP assets and liabilities and provide a detailed report containing a set of customized recommendations to:

i) reduce financial and legal risks;

ii) increase internal IP culture and practices;

iii) fortify IP protection while deferring significant legal fees through optimized patent filing and branding strategies;

iv) identify and address innovation gaps;

v) convert underutilized IP into cash that can be reinvested in core activities and;

vi) overall position the company for a higher valuation and better acquisition or exit position.

Our Comprehensive IP Strategy allows you to navigate uncharted waters with a clear sense of direction and guidelines to rapidly adapt to an ever-changing landscape.

Did you know the average cost to obtain and maintain a single patent in the US alone approaches $60,000 (USD) with no guarantee that you will receive the patent you really need at the end of the process? Furthermore, approximately 3 out of 4 patents that are currently challenged in the US end up being invalidated, usually due to prior art that was not considered during prosecution.  Investing the equivalent of the price of a new luxury car into the patent process, is an expensive endeavor and one to be considered with care, as there is no guarantee of a valuable patent in the end. Quite often, 3-4 years later when the patent examiner looks at your invention for the first time you will discover, unfortunately, that you can’t obtain a valid patent because someone filed for or simply disclosed a similar invention before you did. Alternatively, the prior art may be such that your patent will be meaningless in view of the direction your company and/or the industry has taken.

To avoid unfortunate surprises and to minimize your risk of losing a significant financial investment, it is greatly advised to first conduct a patentability assessment for a fraction of the price of obtaining a patent that may be of no value. This assessment entails studying patents, published applications and technical/product literature available through specialized proprietary databases, and comparing those results to your proposed invention.  The goal is to determine if your invention is patentable in the first place and what its scope might be in light of prior art, before you invest significantly in the process. Assuming it is patentable, knowledge of the prior art helps to further define the claims and can be cited in support of the application, thus generally resulting in a more predictable prosecution and ultimately, a stronger patent.

We are often asked to value IP assets, with the patent assets as the main driver. This is a useful exercise in several scenarios including:

• when one is thinking of divesting (or acquiring) IP assets;
• when a company wants more visibility on the actual market value of the patent portfolio it’s been building over time;
• when looking to raise additional capital or for transfer pricing purposes.

Investors and lenders are often reassured to know that the company they have or may invest in has some additional collateral value. Whether the goal is to identify the maximum value you can reasonably expect to extract through a sale or a licensing program or establish a collateral baseline value, we are in a unique position to objectively assess the value of your IP. Our vast experience lies not only  in brokering the sale of over 5000 patents but also in our knowledge of the IP marketplace and deep bench of industry and valuation experts keeping a pulse on the market.

Do you have a clear understanding of the intellectual property landscape surrounding your technology, including the key players, industry growth projections, technology trends and what the main patent owners in your space are working on? Before engaging in new R&D, design projects or exploring new tech verticals, every business needs to understand their role in the surrounding IP landscape and their “invention gap”. This strategic business intelligence allows businesses to avoid spending scarce resources reinventing the wheel and also identify “white space” opportunities from a patent perspective. These “white spaces” create long-term leverage through broad IP protection that can later be used as a deterrent, a bargaining chip against competitors, or simply as a valuable asset to convert into cash via a sale or licensing program.

As an industry leader, we have helped numerous clients with such business and technical intelligence, enabling each to redefine their R&D direction and take advantage of strategic opportunities. Our landscape studies look at hundreds and sometimes thousands of patents (issued and pending), as well as all non-patent literature worldwide, providing a comprehensive set of documents and analysis that puts business owners back in the driver seat, giving them the tools to make educated decisions based on real data – such as areas of intense patenting activities, current trends, key players, etc.  Our landscape studies also provide fantastic data for current and future patent filings by drilling down to the core novel elements of an invention while providing meaningful background to patent examiners. These elements are often considered the basis for developing a stronger and more strategic patent portfolio.

In today’s buyer’s market, the presence of strong Evidence of Use (EoU) is a critical component in the successful monetization of a patent portfolio. The presence of strong EoU is also one of our main criteria used when we evaluate patent portfolios for potential brokerage. Both buyers and licensees also frequently base their decision on the presence of strong EoU.  We recognize not every patent owner has combed the depths of their technology space for potential infringers and therefore, may be unaware of the true potential value of their portfolio. Our team of technical experts spans numerous technology areas and extends to close partnerships with select firms when highly technical tear downs are required. Our highly efficient process reduces expense to our clients while delivering timely results for review and possible action.

One of the keys to our success as patent brokers has been our portfolio optimization work with patent owners behind the scenes, sometimes for several years. Our priority is to ensure we bring to market portfolios where all available subject matter has been turned into enforceable, valid and easy to construe claims. We can provide the same assistance to new patent owners ensuring the assets they invested in are leveraged to reach their maximum potential.

There are well over 20 million issued patents in circulation. Yet, many of those are probably invalid because they don’t meet novelty or non-obviousness requirements, to name a few. Before acquiring, let alone asserting new patent(s), you must ensure the assets will sustain a legal challenge to their validity. We have experienced researchers who conduct prior art searches, not only through the patent literature, but who look at technical journals, white papers, product specs, trade show related literature, etc. At a very reasonable cost, we provide our clients with a high level of confidence in the assets they are considering for investment.

When the cost of obtaining and maintaining a patent, in a handful of countries, ranges from a luxury car to a small house, building a patent portfolio can represent a huge long-term investment. Not to mention that most companies statistically only practice a very small fraction of the patents they secure.  In many cases, a company will not know whether its patents are enforceable until it needs to assert them, which can be several years down the road. Unfortunately, most patent law firms rely on a simple measure for success, the Notice of Allowance, irrespective of its real strength and strategic value to the client.  Additionally, the law firm drafting your patents will struggle to provide an unbiased review of the strengths and weaknesses of your portfolio. It remains paramount for any company to have clear and realistic views of the relative strengths and weaknesses of its patent portfolio and the steps that should be taken to optimize the value while reducing the cost of building and maintaining the assets. While there are many software tools available to provide a preliminary analysis of a patent portfolio, these usually go “one mile wide and only one inch deep”. Truthfully, there is no replacement for a highly competent technical expert with relevant industry background, someone who has analyzed thousands of patents in the same area over the years and has a well-defined understanding of both the relevant prior art and claim construction. With decades of experience both in house and as outside counsels, we analyze each patent and provide an independent, candid opinion of your portfolio while providing valuable recommendations to both intelligently grow and maximize your hard-earned intellectual property.

The vast majority of the assets developed and owned by technology-based companies are intangible assets.

With this in mind, we believe a thorough IP Due Diligence is paramount to understanding both the risks and opportunities a company may face. These intangible assets also play a critical role when considering an investment in a startup or potential acquisition, or when preparing an exit strategy. It is increasingly common for investors to require a robust review of a company’s IP prior to a new round of funding or acquisition, often with poor outcomes. An IP Due Diligence report analyzes both the quality and quantity of a company’s IP portfolio and how those assets fit within the company’s current and future verticals. Our principals have the legal, business and investment experience to conduct a thorough due diligence of the IP assets of a target company, by focusing on the real deal drivers, and at a fraction of what traditional law firms charge for the same services.