Our services are designed to form the building blocks of a complete IP ecosystem, from due diligence to sophisticated strategic advisory, and valuation to complex sales and IP licensing programs. Most services can be procured separately or combined to better fit your needs and minimize duplicate costs. In most cases, you will get valuable insights and strategic tools to create and maintain a sustainable competitive advantage for much less than the price of filing a single patent application.
FREEDOM TO OPERATE (FTO): It is not uncommon during our inspection phase to uncover short term liabilities that put the company at risk should a competitor decide to flex their “IP muscles”. The reality is that patent litigation in the U.S. costs $5M on average and very few businesses can sustain the costs and the uncertainty during years of litigation. It is therefore paramount to understand if your business is or will be infringing the IP of a third party, whether a competitor or a patent “troll”. We can conduct Freedom to Operate (FTO) analyses comparing your actual or planned product or service to existing and pending patents in the same field. These can encompass 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. 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 any possible litigation. In some cases, it is possible to buy IP insurance protection or even acquire the patent outright (anonymously) via our brokerage services.
COMPREHENSIVE IP STRATEGIES: This is a service most our clients, or their investors, demand. Nothing goes uncovered. We provide the business with a questionnaire which helps to initiate our review of current internal practices, standard form agreements (e.g. NDAs, employment and contractor agreements) as well as any specific agreements the business has entered into that may impact its IP position. We also review all patents (issued or applied), trademarks, trade secrets, and domain names, followed by interviews with relevant personnel to validate or clarify our findings. Using the results of this due diligence work and a much detailed analysis of your business and 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. This allows you to navigate uncharted waters with a clear sense of direction and way to rapidly adapt to an ever changing landscape.
PATENTABILITY ASSESSMENT: Obtaining a single patent in only one country costs essentially the price of a new car. This is what most patent attorneys will charge to draft, file and prosecute a patent application until it issues… or not. Quite often, 3-4 years later when the patent examiner looks at your invention for the first timeyou will discover unfortunately, that you can’t obtain a valid patent because someone filed for or simply disclosed a similar invention before you did, or that the prior art is such that your patent will be meaningless in view of the direction your company and/or the industry has taken. Recent statistics actually show that 90% of the issued patents in circulation are not even practiced by their owners. In order to avoid bad surprises and minimize your risks of wasting such a significant investment, it is greatly advised to conduct a patentability assessment first by searching all relevant prior art. This entails other patents, published applications and technical and product literature available through specialized proprietary databases to which we have access. This helps in determining whether the alleged invention is patentable and what its scope might be in light of the prior art. Assuming it is patentable, knowledge of the prior art further helps better define the claims and can be cited in support of the application, thus generally resulting in a more predictable prosecution and resulting in a stronger patent.
PATENT PORTFOLIO VALUATION: We are often asked to value IP assets, especially patents. This is a useful exercise when one is thinking of divesting (or acquiring) some IP assets or when a company wants more visibility on the actual market value of the patent portfolio it’s been building overtime. Investors or lenders are often reassured to know that the company it invests in has some additional collateral value that doesn’t necessarily appear on the books. With our vast experience in brokering patents, our insider knowledge of the IP marketplace and working with the best experts in various technology areas, we are in a unique position to objectively assess how much your IP is worth and what maximum value you can reasonably expect to extract through a sale or licensing program.
LANDSCAPE STUDY: Before engaging in new R&D or design projects, or exploring new directions, many businesses need to understand their surrounding IP landscape and their “invention gap”. This understanding allows businesses to avoid spending scarce resources to reinvent the wheel. Businesses also want to find opportunities from a patent standpoint, “white spaces” where very few have ventured and where they may be able to obtain broad protection that could later be used as a deterrent or a bargaining chip against competitors, or simply as a valuable asset to convert into cash via a sale or licensing program. We have helped several clients with such business and technical intelligence, enabling them to redefine their R&D direction and take advantage of low hanging fruits from a patent strategy standpoint. Our landscape studies look at hundreds or thousands of patents (issued and pending), as well as all non-patent literature worldwide, to provide a comprehensive set of documents and an analysis that allows the business owner to rapidly see areas of intense patenting activities, current trends, key players, etc. This is like having your own complete domain specific library, already indexed! Such studies also provide fantastic data for current and future patent filings by helping to focus on the core novel elements of an invention while providing more background of the invention to patent examiners, and these elements are often considered the basis for a stronger patent.
DIRECTED INVENTIONS: Using techniques and knowledge acquired first-hand through invention sessions pioneered by a few select Fortune 500 companies and large patent aggregators, we can prepare, coordinate and lead focused inventions sessions to help our clients “push” the envelope in their respective field in a way that will normally yield several strategic high value patents in areas clearly identified beforehand. This is a particularly low cost-high return activity when building on the results obtained through a LANDSCAPE STUDY.
INVALIDITY ANALYSIS: There are over 15 millon issued patents in circulation. So, it is not unlikely that at some point of time, your activities will come very close to patent rights owned by third parties. While a FTO allows predicting where that “red zone” is and often allows you to design around a certain patent, it is not always possible. In those cases, it is good to have some ammunition once the patent holder comes knocking at your door. An Invalidity Analysis focuses on finding prior art relevant to a certain patent of groups of patents already issued to someone else, and provides a company and its investor that it can defeat a future dispute or, many times, convince the patent holder that a confrontation may end up invalidating the patent and that it is better to compete solely in the commercial space.