Your patent portfolio reflects decades of painstaking research and millions of dollars of investment, not to mention the cost of filing for and maintaining the patents. That’s why it is so important to be fully prepared when it comes time to monetize your valuable patent assets.
This virtual summit will take you through the gamut of options for optimizing the sale or licensing of your patents. Our expert panelists will:
- Guide you in preparing your patents for monetization
- Prepare you for negotiations
- Provide detailed advice on working with patent brokers
- Discuss what documents need to be prepared for each type of deal
- Reveal the motivations of buyers and licensees
- Assess patent value in exit strategies
- Explore monetization via litigation finance and sale of royalty streams
- Help you understand your post-sale obligations
- Assess the merits of selling and licensing
- Explore patent pools and monetizing standard essential patents
- Guide your deal term considerations
Even if you plan to hire a patent broker or lawyer to identify and negotiate with buyers and licensees, the knowledge you’ll gain from this program will help you to confidently and successfully negotiate agreements with these critical advisors.
The knowledge you’ll gain from this information-packed program will have a direct impact on your patent monetization strategies and decisions – and can make a huge difference in the ultimate payout you receive.
Program agenda
A Primer on Patent Monetization
Preliminary Steps to Monetizing Patents
- Determining rights to sell
- Characteristics of appealing patent portfolios
- Rights seller wishes to retain
- Navigating through encumbrances on patents
- Continuing obligations of initial patentee/inventors
- Preparing documentation
- Managing seller’s expectations
- Patent valuation reports
What to Expect When Working with Patent Brokers
- Due diligence period
- Duration of agreement
- Retainers, commissions, expense reimbursement
- Tails
- Client relationships
- Thresholds
- Preparation and ownership of sales materials
- Revoking preceding representation agreements
- Placing patents in the right legal entity
- Reducing the risk of invalidity attempts
Panelists:
Erika Warner, VP – Brokerage Services, Tangible IP
Alec Schibanoff, VP, IP Offerings
Seth D. Levy, Partner, Nixon Peabody
A Primer on Spinning Off Technologies
- Identifying promising technologies and related IP
- Funding the spinoff
- Creating a holding entity
- Building management team
- Improving, testing and validating technologies
- Selling improved technologies
Panelists:
Brad Larschan, CEO, Bastille, LLC
Joe Runge, JD, Business Development Manager, UNeMed
Preparing for Negotiations with Buyers/ Licensees
- NDAs
- Conducting due diligence on buyers
- Facilitating due diligence
- The use of datarooms
- Roles of advisors in negotiations
- Method and timing of introductions to buyers
- Term-Sheets / Purchase Agreements
- Exclusive negotiating periods
- Offering an option to a buyer
- Sell or license options to consider
Panelists:
Brooke W. Quist, Partner, Seed IP
Erika Warner, VP – Brokerage Services, Tangible IP
Alec Schibanoff, VP, IP Offerings
Paul J. Corson, Senior Director of Innovation, University of Utah
Monetizing Patents Via Exits
Learn how private companies can best manage and position their patent portfolios to achieve maximum valuations when those companies get acquired or become public companies.
Speaker: Bao Tran, Founder, Patent Professional Corporation
Working with Contingency Lawyers and Litigation Finance Companies in Patent Infringement Actions
- Negotiating Contingency Fee Arrangement with Your Lawyer
- Exclusive review periods
- Firm and partner selection
- Retainers / expense sharing / splitting of proceeds
- Shifting of success fees from sequential infringers
- Handling of invalidity challenges and counterclaims
- Authority to settle
- Impact and distribution of treble damages
- Compensating law firm when business arrangements result from assertion
- Resignation and termination of law firm and potential related malpractice exposure
- Negotiating with Patent Litigation Finance Firms
- Legal authority to operate
- Representations and warranties
- Extent of financing
- Permissions and veto rights
- Disclosure of party of interest
- Interest and other expenses to the patentee
- Legal exposures to finance firm and patentee
Speakers:
Michael O’Shea, Founder, The O’Shea Firm
William Woodford, Avantech Law
Monetizing Standard Essential Patents
- Definitions of standard essential patents
- Determining real essentiality
- Evaluating declarations
- Assessing enforceability
- Determining FRAND opportunities and obligations
- Understanding SEP monetization procedures
- Formulating royalty rates
Speaker: Adam Saxon, Senior Vice-President, Dominion Harbor Group
Patent Pools for Complementary IP
- SEP and non-SEP pools
- Advantages and disadvantages of patent pools
- Identifying appropriate IP for pooling
- Typical structure and operation of patent pools
- Terms and royalty sharing structures
Speaker: Dean Skandalis, Senior VP of Global Licensing and Compliance with MPEG LA
Deal Terms & Negotiating Strategies
- Residual rights & grant-backs
- Purchasing patents with cash, stock, other
- Sequencing of approaching infringers
- Orchestrating the sequencing of assertion efforts around the world
- Minimums
- Royalty structures
- Sublicensing
- Covenants not to sue
- Buy it now price
- Buyers asking for more time to gain insight into demand
- Best and final offers
- Monetizing very large patent portfolios
- Assertion-based monetization in China
Speaker: Louis Carbonneau, CEO, Tangible IP
Patent Acquisitions from the Buyer’s Perspective
- Identifying most receptive companies
- Reducing the risk of potential patent buyers moving to invalidate or bring declaratory judgments against proffered patents
- Attractive features of prior art, claims, patent families. remaining lives and dependent claims relative to independent claims
- Risk of evidence of infringement having been invalidly obtained
- Preferred valuation methods
- Attraction of expired patents in terms of enforceability for past infringement
- Linkage between forward citations and patent salability
- The merits of corporate buyers disguising their identity by retaining intermediaries
- Revealing the identity of secretive corporate patent buyers
- Differences in selling patents to privately-held corporate patent buyers versus publicly-traded patent buyers
Panelists:
Marc Booth, Chief IP Officer, Acacia Research
Michael Lubitz, Managing Director & Founder, GTT Group
Adoram Shemesh, Intellectual Property Consultant, PulseIP
Meet your panel of presenters
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Summit Chairman
David Wanetick, CEO, Certified Patent Valuation Analyst
Thought Leaders:
Marc Booth, Chief IP Officer, Acacia Research
Louis Carbonneau, CEO, Tangible IP
Paul J. Corson, Senior Director of Innovation, University of Utah PIVOT Center
Brad Larschan, CEO, Bastille, LLC
Seth Levy, JD, Partner, Nixon Peabody
Michael Lubitz, Managing Director & Founder, GTT Group
Michael O’Shea, Founder, The O’Shea Firm
Brooke W. Quist, Partner, Seed IP
Joseph Runge, JD, Business Development Manager, UNeMed
Adam Saxon, Senior Vice-President, Dominion Harbor Group
Adoram Shemesh, Intellectual Property Consultant, PulseIP
Alec Schibanoff, VP, IP Offerings
Dean Skandalis, Senior VP of Global Licensing and Compliance, MPEG LA
Bao Tran, Founder, Patent Professional Corporation
Erika Warner, VP – Brokerage Services, Tangible IP
William Woodford, Avantech Law
Who should attend
- Technology Transfer Professionals
- IP Asset Managers
- Intellectual Property Licensing Professionals
- Investors
- Inventors and Patent Owners
- Research Directors
- Corporate Intellectual Property Attorneys
- Business Leaders
- Business Development Professionals
- CEOs, CFOs Directors of Emerging Companies
Trusted sources
Tech Transfer Central’s reputation of providing the world’s leading content via newsletters, distance learning and other resources, coupled with BDA’s unparalleled educational offerings for the business community, is second to none.
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