Ten years ago, patent monetization was considered a corporate “best practice.” C-suite executives at operating companies spoke openly about unlocking the value of their “Rembrandts in the Attic” and replicating IBM’s success in earning $2 billion annually in licensing revenue.
Thanks to the rise of abusive patent assertion behavior in recent years, however, companies with reputations to protect don’t like to talk about patent monetization anymore. Or if they do, it’s only in whispers because no one wants to be branded a “patent assertion entity” or “patent troll” in the minds of shareholders or Washington, D.C., policymakers.
Still, the lure of patent gold continues to attract companies with untapped value in their IP portfolios, and many large operating companies believe there is significant value in the patent portfolios they have developed over the years as a byproduct of their R&D investments. This is especially true in companies where IP has traditionally been used defensively or in cross-licensing arrangements, but not actively monetized for their bottom line. The amount of underutilized value in these portfolios is anything but trivial. According to Navi Radjou of Forrester Research, “U.S. firms annually waste $1 trillion in underused intellectual property assets by failing to extract the full value of that property.”
This appears to be changing, however, as more and more product and service companies become interested in tapping the hidden value in their IP treasuries. And because many of these firms don’t have the resources, industry contacts or singular IP licensing skills needed to do the job effectively in-house, outsourcing can be an attractive option.
As the vice president and general counsel at the U.S. headquarters of a major Japanese company recently told Intellectual Asset Magazine, the leading journal for corporate IP officers: “The main objective in using a third party licensing company would be to generate more money from licensing. We have a strong patent portfolio and I believe there is much unrealized potential in the returns that a licensing company could generate.”
The magazine also quoted the vice president and general counsel of a global products company. “We have great resources here, but we’ll turn to a third party when we feel they provide us with a better chance of getting a deal done,” said this executive. “Otherwise you leave value sitting on the table and you’ve squandered the chance to redeem that value. Third parties can sometimes do better than we do because they have greater geographic reach with contacts all over the country and a reputation for making deals happen.”
Overall, research indicates that roughly 50 percent of product and service companies surveyed would consider using a third party professional licensing firm to monetize their portfolios. But with whom will they partner?
It turns out that in addition to a licensor’s actual track record of success, the single most important criterion in a company’s choice of a potential licensing partner was the licensor’s reputation and trust. That’s because companies with brands to protect simply can’t afford the legal, competitive and reputational damage that could result from partnering with a licensor known for engaging in abusive or egregious patent troll-style behavior.
What if, for example, your company partners with a licensing company that takes your patents and starts suing Mom-and-Pop small businesses—or gets in trouble with state or federal regulators over its indiscriminate assertion tactics? Can you imagine the public and industry backlash, and the resulting damage to your company’s brand? Don’t forget, most of the value of public companies lies in their intangibles, of which their brand can be a vital component.
Or what if your company works with a monetization partner who doesn’t do proper due diligence in selecting which patents to license—and which prospective licensees to focus on? The patents managed by that licensor could end up being neutered (i.e., judged noninfringed or invalid), which could in turn taint your remaining patents.
Or what if you partner with a licensor known for abusive behavior? This could undermine your own company’s ability to defend itself against inbound patent assertion claims. It’s not difficult to imagine how plaintiffs’ attorneys could destroy your claim to being the victim of an abusive patent troll by revealing your own history of using such players against others.
For executives at global technology companies, these are all very real concerns, especially with the growing calls from industry and policymakers to curb abusive patent assertion behaviors. And these are concerns we understand well because we were executives at global technology leaders ourselves for many years.
When Joe Beyers was in charge of Hewlett Packard’s intellectual property licensing business, for example, the reputation and past behavior of the licensing companies that approached us was a key factor in whether we choose to engage with them or not. If the licensing company had a history of acquiring assets and then suing right away—or had a history of going after nuisance fee settlements—then we’d assume they had weak assets or that their licensing practices would do damage to our brand if we chose to work with them. If the licensing company had a history of ethical and responsible behavior, however, we’d be much more likely to engage.
In short, it’s absolutely essential for operating companies to work with a patent licensing partner known for transparent, ethical and responsible business practices. The competitive, legal and reputational risk of doing otherwise is simply too great to ignore. Here, then, are five Don’ts and five Do’s when choosing a third party licensor to assist with patent value creation initiatives:
1. DON’T choose a licensor with a reputation for acquiring poor-quality patents and quickly suing.
2. DON’T select a licensor with a history of settling claims for a lot less than the cost of litigation (i.e., “nuisance fees”).
3. DON’T work with a licensor that sends widespread demand letters to multiple companies with little or no evidence that its patents are being infringed.
4. DON’T use a licensor that’s been the subject of any state actions or consent decrees, or has been forced to pay an opposing party’s attorneys’ fees.
5. DON’T partner with a licensor that operates behind hidden shell companies or otherwise has a reputation for abusive patent assertion behavior.
If any of the above are true, the potential licensor is not likely to be a good patent monetization partner. Instead, select a high-quality, brand-supportive licensing partner:
1. DO select a licensor that has made a public commitment to transparency and ethical business practices—and then speak with its licensees to confirm that this commitment is genuine in deed as well as word.
2. DO work with a licensor that seeks licenses only from appropriate companies (rather than startups or small retail businesses), and that comes to negotiations with substantive claim charts and other evidence of use.
3. DO choose a licensor that selects, owns and manages high-quality patent assets developed by global operating companies with reputations for innovation, like you.
4. DO use a licensor that takes active steps and commits material resources to ensure the quality of its patents, and vets them prior to licensing.
5. DO ensure that members of the licensor’s executive team have product or service company experience, and understand the needs and concerns of companies like yours regarding patent value creation.
With a little due diligence in choosing the right partner, corporate counsel can make patent monetization a respectable best practice once again.
Joe Beyers is the CEO of Inventergy, a patent licensing firm generating value for corporate technology leaders, and was for many years the IP chief at Hewlett-Packard. Wayne P. Sobon, the former IP chief at Accenture, is general counsel at Inventergy and is the 106th president of the American Intellectual Property Law Association.