Intellectual Property Group

Intellectual property (IP), patents in particular, remain largely untapped as a potential source of revenue because few IP lawyers and even fewer business people and non-IP lawyers are aware that vehicles to generate revenue directly from patents exist in today’s marketplace. At DeWitt Ross & Stevens, we have a highly experienced Intellectual Property team and the techniques to generate revenue directly through patents-IP Monetization.

IP Monetization is a method companies can use to generate revenue directly from IP assets, typically patents. In a standard transaction, a company sells its patent to a third party who expects to generate revenue through licensing or litigation of the patent. The selling company will often retain a license to continue using the technology protected by the sold patent, which minimizes the business impact of selling the patent.

IP Monetization is an emerging practice which evolved from the “intellectual asset management” movement. In contrast to the somewhat undefined goals of intellectual asset management and relative difficulty in assessing whether such goals were met, IP Monetization produces measurable financial results.

While IP Monetization efforts have been heavily focused on the high tech software and hardware businesses of Silicon Valley, our attorney, Joe Miotke, is expanding the scope of IP Monetization beyond Silicon Valley so that a broader variety of industries and businesses can share in the benefits of IP Monetization.

IP Monetization occurs in two distinct phases: (1) the mining phase and (2) the monetizing phase.

The first phase, often conducted on a fixed-fee basis, involves reviewing a client’s patent portfolio and “mining” for those patents that can be sold or otherwise monetized. The goal of the mining phase is to identify high-value patents, the diamonds in the rough, of which a client might not be aware.

During the mining phase, we work very closely with the client’s engineering, sales and marketing personnel to assess the potential marketability of patent assets. In addition, we frequently collaborate with the client’s existing IP counsel for additional information about the client’s IP portfolio.

The end work-product of the mining phase is an assessment of the marketing potential of the client’s patent portfolio.

The second phase is monetizing the patents identified during the mining phase. The monetizing phase is typically conducted on a success fee-based structure. The most common form of monetizing a patent is an outright sale of the patent, by and large with a license back to the client enabling the client to continue practicing the patented technology. However, we work with clients to customize the transaction depending upon the specific needs of the client as well as any specific requirements of the purchaser.