Best Practices for Monetizing Patents: A Virtual Summit
Format:
On-Demand Video / Transcript
Originally presented: Thursday, June 9, 2022
Price: Starting at $495
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
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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Technology transfer (or tech transfer), in the context of research institutions, is the process by which new inventions and other innovations created in those institutions’ labs are turned into products and commercialized. Read more >>
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