- Client Counseling, Licensing & Technology Transfer
- Interference and Derivation
- Litigation and Trial
- Portfolio Management and Due Diligence
- Post-Grant Patent Group
- PTO Petitions, Appeals & Special Procedures
- Software, Computer, Electrical and Telecom
- Startup Group
Portfolio Management and Due Diligence
The potential intrinsic value of an IP portfolio is often underestimated. Reliance on marketing and technical analyses is only a piece of the puzzle. Understanding its role and value in the marketplace requires an experienced evaluation of the IP itself including analysis of patent claims, file histories, prior and potential litigation, industry trends, and the IP of competitors and potential competitors. The firm has literally conducted over a thousand studies and analyses of individual patents and portfolios, from virtually every imaginable perspective, many of them involving high value due diligence issues.
Analysis of patent portfolios containing tens or hundreds of patents requires a structured approach which provides a useful conclusion within a reasonable amount of time and cost. Rather than pro forma “canned” reports clients expect meaningful, concise and direct conclusions. This requires a highly experienced project manager who surveys the project, interviews the client to determine what exactly is need, and then being able to draw on the vast resources of the firm to provide the desired result.
A group is then formed on an ad hoc basis depending on the particular project. It is generally composed of firm members from both the prosecution and litigation departments and is tailored depending upon the technology involved, the background and history of the project, such as where prior litigation has been involved, the geographic scope of the IP portfolio, and other aspects specific to the particular situation.
The firm can draw on its long experience in such projects knowing, for example, what kind of patent claims to expect to see, file history issues which lie beneath the surface, conflicting claims of competitors, and identifying key claims from amongst numerous patents as being central to the industry.
Having been involved with the purchase and sale of patents, and licensing for over thirty years, and having negotiated countless deals, we know how to structure a portfolio presentation, and conversely what is missing from those that we evaluate.