IP Path to Value Lawyering Services
The IP Path to Value℠ suite of products and service offerings is a nine stage multi-disciplinary approach that assists companies to strategically identify, grow and realize a company’s patent portfolio value. The IP Path to Value℠ services guide an organization to strike the appropriate balance between patenting everything (but doing so at considerable cost and inefficiency) and patenting little to nothing leaving the company unprotected with unrealized intellectual capital. The suite of services integrates patent management with business strategy and technical innovation so organizations can leverage intellectual property assets to drive technology leadership, market position, and competitive advantage resulting in increased economic value. The Juhasz Law Firm provides independent legal services in connection with this program.
Stage 1 – Strategic Decision Making for IP Value (SDM)
The IP Path to Value process begins with a strategic assessment and strategic goal setting process with the executive team responsible for the company’s intellectual property and the strategy meetings continue throughout the process. The strategy meetings are used to develop strategic scenarios, building upon what has been learned from prior stages to assist the company to better discover, grow and predictably realize potential value from the evaluated intellectual property portfolio. The intent is to take a holistic view of the business, market, technology and intellectual property assets to develop strategic roadmaps that become the guide for future risk/reward IP decision making.
Stage 2 – Heart of Company℠ Assessment (HOC)
Heart of a Company℠ assesses alignment of a company’s patent(s) claims in relationship to business strategy, core competencies, product readiness and market response as potential drivers of profitability. The assessment will assist management in prioritizing and classifying patents for licensing, sale, or injunctive relief and further development and activity. Stage 2 begins the process by which companies can discover, grow and predictably realize value for the organization’s intellectual property.
Stage 3 – Market Opportunity Assessment (MOA)
This stage examines the economic opportunity for the patented technology by assessing market size, market readiness and adoption, industry structure and profitability, competitive alternatives and threats. Included in the assessment are strategic scenarios and an economic model of potential monetization value from intellectual property enforcement and licensing. An economic analysis is prepared of leading companies who are potential benefiting from use of technology apportioning the profit contribution from the IP.
Stage 4 – Patent Quality℠ Assessment (PQA)
Representative patents that have potentially high business linkage are selected from a company’s portfolio for an in depth patent quality assessment. The assessment includes the study and analysis of the patent, review of patent history with the patent office and an examination of patent claims with respect to prior art that was before the patent office. There will be an understanding upon completing this stage as to whether the patent(s) merit proceeding to a later stage for consideration for marketing, licensing and/or enforcement.
Stage 5 – Patent Adoption℠ Assessment (PAA)
While the PQA looks backward to the patent history the Patent Adoption Assessment (PAA) assesses patent activity and actions taken by third party companies after a patent holder’s patent has been filed and/or issued. Illustratively, using the United States Patent Office’s forward search engine a study is done based on a selected patent(s) to determine which third party company patents are citing the client company’s patent(s) in their filings. Alternatively, the subsequently filed patents of a competitor or other company may be studied to determine points of convergence with the patent(s) of the client. The PAA “peels back the onion” with a “deep dive assessment” when a third party patent appears to have adopted the client company’s IP. Included in the PAA would be construction of a claims chart to show how the client company’s patent claims may read on the third party patent. The Patent Adoption Assessment (PAA) is a crucial step in determining possible infringement by third party companies.
Stage 6 – Technical Analysis and Assessment℠ (TAA)
The Technical Analysis and Assessment℠ examines technology referenced in selected third party patents such as may be identified in the PAA and how it is similar or differentiated from the technology referenced in the client’s patent claims. The TAA may also involve a review of third party specific products and apparent implementation of technology as described in patents. A TAA is usually performed prior to construction of a claims chart on specific products with the input of the technical expert providing technical guidance for use in construing the claims with a Markman like approach.
Stage 7 – Tuning the Portfolio (TP)
With the strategy and direction set by management the company focuses on building out and strengthening its IP portfolio with an effective and economic efficient process. Stage 7 services include patent preparation, patent filing and prosecution, office action and response, handling of appeals and abandonment. Patent work includes not only U.S. but foreign filings and prosecution as well.
Stage 8 – Protecting Company Value℠ (PCV)
In this stage the emphasis is on putting together the plans and strategies as to how to address intellectual property that is misappropriated and /or improperly being sold, made or used thereby representing a threat to a company’s value. An infringement assessment may be done to ascertain whether another company’s product or invention is infringing on key patent claims. Patent clearance work may also be blended into the work mix. The findings from an infringement assessment could lead to a decision to pursue IP licensing, sale or litigation of a company’s patents. Depending on the extent of litigation complexity, economic opportunity, risk assessment and legal strategy, representation may be constructed on an hourly or contingency fee basis.
Stage 9 – Realizing Company Value (RCV)
Stage 9 is the implementation phase of the Stage 8 strategies. The work done in prior stages culminates with a blueprint as to how to best monetize portfolio value including the potential licensing, sale or litigation of intellectual property. Stage 9 services associated with the sale of patents can include identification of strategic buyers, valuation and development of collateral material, candidate presentation, transaction handling, closing and if required on-going administration. Licensing services can include strategy development, royalty determination, economic modeling, marketing material development, candidate identification, program administration, drafting of contracts, negotiation and record keeping and controls. An important element of RCV is assisting the client in setting up a process to administer a licensing program. Administration should include royalty audits for compliancy by licensees with license terms and payments.
By adopting a multi-disciplinary and targeted approach to patent management that integrates business, technical, market and legal strategies and actions a client will more likely derive greater value and benefits from its intellectual property.