Hello all,
A happy Valentine’s Day to all IP owners around the world! This is the day where we celebrate our love for patents, innovation and a strong patent system. Nothing less. 🙂
The last few weeks were replete with good news for patent owners, including the appointment of an acting Director of the USPTO (who could well be the permanent choice) the abandonment of a vilified SEP policy proposal in Europe that would have taken the matter out of the courts’ hands, and other notable developments that trend in the right direction thus consolidating the bullish views of the IP market place I expressed in my last newsletter.
However, a better environment is not a guarantee of success, and we still see patent owners, big and small, make fundamental mistakes when trying to monetize their assets by themselves rather than hiring a professional broker. There is a reason why 87% of all patents sold were transacted through a broker (according to Richardson Oliver Analytics (ROI), who track all patent transactions). More on this topic below.
As usual, as I focus on the macro picture in this newsletter, I want to remind everyone that we track everything that is going on in this world and for those who need their regular dose of news, once again you can follow me on either LinkedIn or Twitter where I post almost daily about some of the most newsworthy events.
Happy reading!
Louis
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Tangible IP News
I am pleased to officially report that we closed two recent transactions where we successfully brokered the sale of our clients’ patents. One such transaction involved the whole AST IP3 2023 portfolio of over 150 patents spanning 36 separate lots originating from various inventors. See the full announcement here. We were retained for the second time by a leader in the lighting area and were able to finalize the sale of some of their assets. See the press release here.
Finally, we recently assisted a client in the acquisition of strategic assets in the vision domain to help them with a current dispute with a third party. Given the context, we are not at liberty of disclosing any details yet. But suffice to say, we are often retained by clients to identify, source and buy patents anonymously to meet key strategic goals.
I was interviewed last month by Bruce Berman of the Center of Intellectual Property Understanding (CIPU). The full interview is now available here. IPWatchdog also published a nice summary thereof for those who don’t have the time to listen in.
Speaking of IPWatchdog, I will be speaking at the upcoming IPWatchdog Live 2025 in Arlington, VA where Tangible IP is also a sponsor. My panel with focus on the Future of Patent Dealmaking, Monetization and other Licensing along with a few distinguished co-panelists.
Gene and Renée Quinn always put together a great event and this year should be no different
We also have several other portfolios for sale that offer great opportunities to savvy buyers. All of our patents for sale are listed here. Similarly, if you’d like to be added on our distribution list in the future so that you are the first to receive new opportunities, please email us at info@tangibleip.biz.
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Patents Wanted
Calling for high quality portfolios! We represent several buyers looking to acquire high quality portfolios. Some of the areas of interest are included below. Please refer to our Brokerage Criteria to see if your assets qualify. If so, please send the portfolio to info@tangibleip.biz for review.
- Semiconductor
- Handset/laptop
- Wireless wifi5/6
- Network security
- Medical device
- Network hardware
- Imaging
- Battery
- Lights/led
- Automotive
- Display
- IoT
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Recent News:
The USPTO Has a New Boss, But Who’s Left?
The big announcement of the past weeks was no doubt the nomination of Coke Morgan Stewart who was sworn in as the Acting Director of the United States Patent and Trademark Office (USPTO) on January 20, 2025. She replaced Derrick Brent, who served as Acting Director after Kathi Vidal resigned in December 2024. Mrs. Stewart is generally viewed as having pro-patent views and the speed at which she was selected suggests that the nominee for Commerce Secretary, Howard Lutnick, is stamping his influence even before he gets the formal nod. Since she is in an “acting” role, she does not yet need a confirmation herself. The question now is whether she will play a caretaker’s role while others audition for the permanent job, or if this is her job to lose. Judging by recent confirmations of much more controversial posts that nevertheless received the assent of the full Senate, I will go with the latter and hopefully this will quash the rumors that the frontrunner for the job was Intel’s Head of IP Policy, Vishal Amin, who many have decried as being the architect of the PTAB (which is not meant as a compliment…).
In the meantime, though, the USPTO is dealing with the aftermath of the Fork in The Road memo sent by DOGE’s Elon Musk as many long-term employees have elected to leave, including Commissioner for Patents Vaishali Udupa (she was replaced immediately by Valencia Martin Wallace) among others. This, combined with a mandatory Return-to-Office policy for all PTAB Administrative Judges — though virtual patent examiners remain exempt for now — is likely to drive higher attrition, just as the patent application backlog reaches an all-time high. We recommend paying the extra fee and requesting an accelerated examination for your U.S. applications – that is, if you want to see your patent issue before retirement!
Le Canary is Back!
Those who track the market like we do probably saw the recent announcement that one of Erich Spangenberg’s companies (SIM IP) recently acquired a large portfolio in the haptics space. Although Erich is not listed in my 6 factors that impact the IP Market, he might as well be as he’s always been the proverbial canary in the patent mine… except that he comes in when there is new oxygen… I can’t think of anyone who has read the market as well as he has in the past two decades. I joined him for a nice chat earlier this week from his Paris perch and he was adamant that the patent market is ready for a good long run. Patent owners rejoice!
The Defendants’ Toolbox
If you’re expecting the day when the PTAB is finally reined in and patent owners can fully exercise their right to a fair trial, as guaranteed by the U.S. Constitution, you may be in for a disappointment. Defendants who used to file serial IPRs with 80% invalidation success are seeing the writing on the wall and have rediscovered another tool to accomplish the same result; the ex parte reexeam. Indeed, recent RPX data shows that those spiked by 26% in 2024.
(Source: RPX)
Don’t Try This at Home
As I mentioned in our introductory comments, almost 90% of patents sold involve a broker. Given the complexities of patent transactions and the relationship-driven nature of the IP market, it’s surprising that some inventors opt for the “do-it-yourself” approach. While the desire to save money is understandable — I sometimes contemplate selling my own house — the IP and real estate markets are fundamentally different.
Firstly, only about 1% of patents are actually transactable, whereas even dilapidated property has intrinsic value. Secondly, determining the price of patents is notoriously challenging. Value is subjective, and even if you believe your patents are worth something, potential buyers might not share that view. Some may even choose to infringe, banking on the hope that you lack the resources to enforce your rights — a risk heightened by the weak threat of injunctions in the US.
Many patent owners struggle to connect with the right individuals in prospective acquiring companies. Even within large corporations, there is often no dedicated personnel or budget for patent acquisitions. While corporate development teams may have funds for broader acquisitions, this typically does not extend to patents as a distinct asset class. Your best chance lies with the patent department, particularly those managing patent litigation. When I was at Microsoft, we dealt with a high volume of lawsuits, focusing on managing rather than eliminating them. Unfortunately, this strategy is still prevalent, supported by a weakened patent system.
Without the right contacts, outreach efforts are likely to falter. We spend considerable time tracking changes within the patent professional community, updating our network monthly just to stay informed about who is in charge.
Another common misstep is failing to thoroughly evaluate patent validity risks before bringing them to market. Approximately 80% of US patents challenged at the PTAB are invalidated due to prior art. While biases among PTAB judges may contribute to this statistic, relying solely on the USPTO for prior art searches during patent prosecution is a sure path to failure. This creates a false sense of security that can dissolve when enforcement is necessary. As brokers, we rigorously assess patent validity before marketing a portfolio, knowing that buyers will do the same.
Additionally, many patent owners have a distorted understanding of the scope of their claims, mistakenly identifying infringement where none exists. The legal threshold for proving infringement is high; every element of a claim must align with the allegedly infringing product or service. Various issues can further complicate this process, including divided infringement, insufficient specification support, indefiniteness, concessions made during prosecution, and incorrect priority dates.
We frequently receive portfolios from owners who have attempted to identify infringement, sometimes even commissioning claim charts. While this is commendable and such charts are essential for monetizing a patent portfolio, many prepared by service providers are flawed. Beyond our own Alan Burnett, I trust only seasoned patent litigators to prepare or review robust claim charts, as they can quickly identify any weaknesses. Superficial claim charts won’t convince potential buyers to license or purchase your patents, as reputable law firms will hesitate to litigate them for fear of sanctions. At Tangible IP, we prepare all of our claim charts internally and rigorously vet them, with no challenges from prospective buyers to date.
When it comes to pricing patents without sufficient comparable data, the answer is straightforward: you don’t! The market determines patent prices, and our role as brokers is to foster a competitive environment that encourages buyers to present their best offers. As a result, most of the packages we market attract multiple offers, providing our clients with a broader range of choices. Importantly, not all buyers are equal in terms of resources or commitment to closing a deal. Our experience allows us to guide clients toward the most suitable buyers and advise them on negotiation strategies and enforcement aggressiveness.
Managing a typical patent sale is a 6-12 month endeavor that involves multiple outreach rounds, numerous technical discussions, negotiations, due diligence, and legal reviews. Few individuals possess the necessary expertise to navigate this process effectively.
In summary, selling patents today resembles brain surgery more than real estate transactions. This is likely why even large companies, after unsuccessful attempts to sell patents internally, often turn to us and other reputable brokers to find suitable homes for their assets.
As the saying goes, “If you think dealing with professionals is expensive, wait until you deal with amateurs.” So, when you’re considering selling a patent, please don’t attempt this at home!