Patent Scoring for Protection against Patent Trolls

A large number of companies are suffering from the Patent Troll menace. In a recent news item, titled "Local firms suffer patent suits", several Korean majors such as Samsung and LG have been reported to be among the top victims of offensive suits by Patent Trolls.

One way for large corporations to protect themselves against patent trolls may be to preempt such an attack. A reliable and tested patent scoring methodology may be able to provide the top 3%-5% of patents in a classification, say the US Classification (USC). This will enable an analyst to discover the assignees of those patents. Such an analysis should result in the identification of holders of key IP in a given area.

As an example, I have been reading about the Typhoon Touch Technologies patent US5,379,057 being used for suits against a whole lot of companies such as Samsung, Nokia, Motion Computing Inc., Electrovaya Inc. and Xplore Technologies Corp., Apple Inc., Fujitsu Computer Systems Corp., Toshiba America Information Systems Inc., Lenovo (United States) Inc., Panasonic Corp. of North America, HTC America Inc., Palm Inc., Samsung Electronics America Inc., Nokia Inc. and LG Electronics USA Inc.

Upon querying this patent in a scoring system developed by my team, I discovered that is a very highly scored patent with a score of 69.04 according to our system. This places the patent in the top 3% of the patents in its US class (all digits) and the patent's score is more than 2 standard deviations away from the mean. Such a company and the patent could have been uncovered in a periodic analysis of the key areas of practice for the company.

This is just one of the potential use of a patent scoring mechanism. As they say, better safe than sorry, and that appears to especially true when dealing with the Patent Troll menace!

Andrew Ramer's new company: Marqera

Andy Ramer, the well-known ex-leader of Ocean Tomo auctions has formed a new company, called Marqera. He is joined by ex-colleagues Nicole D'Hondt, David O'Steen from Ocean Tomo and Joe Kessler, Sharon Dayan from Global Technology Transfer (GTT).

The underlying theme of the company's services can perhaps be sensed from the following snippet from their website:

"For years, companies have been investing billions of dollars in creating, prosecuting, and maintaining their patent portfolios. They are now at a point where these portfolios must generate revenue and a return on that investment, through sale, license, or other creative structure."

Whether the company is successful in creating a new platform of commercialization of IP remains to be seen. This blog wishes Marqera all the best!

Pluritas Conducting a Patent Auction of GPS related IP

Pluritas did a press release (click here) about an auction of a patent portfolio related to GPS emergency locator patents. The broker seems to have discovered quite a good portfolio.

My team at work invested about 18 months researching and building a methodology for evaluation of patents and patent portfolios. The table below shows the scores of the portfolio being auctioned (best guess using assignee/inventor searches, as the press release did not mention the patent numbers)

4 of the 5 US patents are 98th percentile or higher among comparable patents with exceptionally high scores.

It remains to be seen how much value does this portfolio fetch. Guess we will know in a few weeks time.

Patent Monetization: Why even bother?

That IP in general and patents in specific occupy a significant importance is much talked about. How much is generally a question that is avoided. The figure above, based on Ocean Tomo's research, shows that Intangible Assets comprised about 75% of the market capitalization of S&P 500 companies. About 22.5% of the total market cap has been attributed to patents which is about 1/3 of all value attributable to Intangible Assets.

In an economy where about 1/5th of the valuation that most companies, especially those in 'knowledge' based industries, derive is due to patents - their monetization is not just a matter of choice anymore. It is a matter of shareholder responsibility.

Global Patent Congress 2009

This author is attending the Global Patent Congress 2009 in Copenhagen, Denmark starting tomorrow (September 22).

The conference agenda promises to touch on several aspects related to Optimization of patent portfolios - some of the key sessions include:

Day 1

1. Building your Internal IP Organisation to Drive Market-based Innovation to Support Business Goals

2. Managing your Portfolio Value by Capturing your IP Market and Strategic Value

3. Expanding your Market Share by Negotiating & Marketing IP Licenses Globally

4. Extracting Value from your IP Portfolio by Integrating Market-Oriented Evaluation to your Licensing Programs

5. Strategic IP Management in a Global Corporation

6. Reviewing your Geographical Protection and Enforcement Strategies to Minimise Risks

Day 2

1. Building & Merging Patent Portfolios to Align IP Assets with Corporate Objectives

2. Using IP Portfolio Management & Divestiture to Maximise the Business Value of your Patent Portfolio

3. Leveraging your Patent Portfolio to Monetise your Portfolio and Strengthen Competitiveness

4. Managing your Portfolio Value to Maximise your Long-term Market Strength

5. IP Portfolio Management, Portfolio Optimisation and IP Strategies in Emerging Markets

6. Increasing the Value of your Patent Portfolio by Balancing IP Costs and Potential

Watch this space for updates from the conference.

OptiSourcing - Optimization and Outsourcing of Intellectual Property

The crash of the captial markets and the failure of banks leading to a severe liquidity crunch may be remembered for several things. However, the one good thing that this 'recession' will be remembered for is the rapid adoption of best practices by corporations across the world.

This blog is about the evolution of the practice of intellectual property creation, management and exploitation due to the changes that corporations, law firm, and private practitioners are facing.

The two key themes that will impact IP management, both administrative and strategic, will be Optimization and Outsourcing. Optimization broadly covers practices and initiatives toward

• Rationalizing costs of IP creation and management
• Strengthing of patent portfolios by ensuring an alignment with business objectives
• Monetization of intellectual property including patents leading to a self sustaining IP department, and
• Emergence of patent portfolios as real weapons (for defensive and offensive purposes) in a corporate strategists arsenal

Outsourcing, especially offshore outsourcing, of administrative tasks and activities in the IP department of corporations is fast becoming a reality. Several multi-national corporations have tied up with providers of IP Support Services located in low cost locations such as India, Philipines and South Africa to address their needs related to:

• Patent and Trademark paralegal work
• Management of dockets related to patent prosecution, management, and litigation
• Proofreading of patents
• Illustrations within patent applications
• Billing Management and management of payments to outside counsel

This blog will cover strategies to achieve OptiSourcing, examples of successful "OptiSourcers", common pitfalls and best practices. Reader feedback and sharing of their experiences is also welcome.