Patent Strategy Questions

Patent Strategy for Patent Monetization

When executives or investors are considering options in monetizing their patents and technology they may find several objectives in conflict. e.g. desire to produce licensing revenue vs. a negative impression from other industry players.

Some examples of patent strategy questions…

On Monetization:

Why should we sell or license our patents?
–What are the pros and cons?
•If we sell our patents will that create the wrong impression for prospective clients or investors?
•Will a sale of patents affect our corporate value (M&A sale price)
•If we were to sell our patents which ones would we sell and which ones would we keep?
•Should we consider starting a licensing business?
•Should we license or sell the patents in a single transaction?

On Direction:

What should we do with our patents from a directional standpoint?
•Which filing should we create now and where should we invest the bulk of our patent development efforts:
–Product protection
–Competitive constraint
•What is our competition doing regarding patents and how can we stay ahead?
•How good are our patents and how can we improve the portfolio?

On Business Strategy vs. Patent Strategy:

  • Do we intend to be offensive or defensive with our IP?
  • Will we assert these patents against other companies?
  • Do we need these patents strategically?

–Do they align to our future direction?

  • How old are these patents and how close are they to expiration?

–What value remains – is it best to extract the maximum value now or later?

  • What return would we get if we were to sell the patents?
  • What are the risks and downsides of selling vs. licensing?
  • What does the cost benefit analysis indicate?