Data-Driven Decision Making for Patent Portfolio Managers

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By Bret Tingey, Associate | IPWatchdog.com

A patent portfolio can be one of the greatest assets that a company owns. A patent portfolio may boost a company’s valuation for a stock offering or a sale, may be licensed for recurring revenue, may be sold to raise cash, or may be enforced to seek monetary damages or to exclude competitors from the market. However, growing a patent portfolio can be expensive. For this reason, many companies hire a portfolio manager to balance the value and expense of growing and maintaining the patent portfolio.

A portfolio manager may be responsible for making decisions including a total target number of patent filings, target numbers of patent filings for different technology areas of the company, patent firms to use for filing and prosecuting patent applications, or how to manage costs per issued patent. The portfolio manager can improve the decision-making process by using data-driven decision making. This article shows some examples of data-driven decision making.

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Frank Jakes, Legendary Trial Attorney – Clause 8 – Episode 16

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This episode of Clause 8 features an interview with trial attorney Frank Jakes – the founder of the Intellectual Property Group at the firm of Johnson Pope in Tampa, FL. There’s a good chance that you have recently seen him questioning Joe Exotic in the Netflix documentary Tiger King. However, even before successfully representing Carole Baskin and Big Cat Rescue, Frank Jakes was already a legendary trial attorney in Tampa who handled lots of cases involving high-profile parties and interesting personalities and won many millions of dollars in verdicts. Many of those cases involved a wide variety of IP rights.

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Your Licensees’ Patent Marking Program is Also Your Concern

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By McCord Rayburn, Associate

As an in-house IP attorney, you may take comfort in knowing that your patent marking program is thorough, well-established, and properly executed. You have standardized procedures to determine which patents cover which products. You monitor product release dates to ensure appropriate marking. You have set up a “virtual marking” website to take advantage of this form of marking established by the America Invents Act (AIA). You regularly update the virtual marking website to remove expired patents and add newly granted patents. Your patent marking program is a well-oiled machine. But what about your licensees’ programs? Do you know anything about your licensees’ programs? Do you even care about your licensees’ programs? Well, you should, and the Federal Circuit recently provided another opinion to remind patent licensors that a licensee’s failure to mark can be costly.

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Bunch O Balloons Inventor Josh Malone – Clause 8 – Episode 16

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Tune into Eli Mazour‘s Clause 8 Podcast for an exclusive interview with Josh Malone – the inventor of Bunch O Balloons and America’s foremost advocate for reliable patent rights.

Josh came up with the idea for Bunch O Balloons to help his kids fill up 100 water balloons in less than one minute. It eventually became the most popular toy in America. However, before Bunch O Balloons even came to market, another company copied it and started selling its own versions of the product. Luckily – or so he thought at the time – Josh filed a patent application for his Bunch O Balloons invention. He did not know the enormous amount of time, money, and luck it would take to successfully enforce patents that covered his invention. This episode tells the story of what it took, including taking a trip to Bentonville, AR in the middle of the night to try to convince Walmart to stop selling knock offs of his product.

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Kevin Jakel of Unified Patents Pt. 2 – Clause 8 – Episode 15

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Tune into Eli Mazour‘s Clause 8 Podcast for the second and final part of our interview with Kevin Jakel, the founder and CEO of Unified Patents. On this episode, we continue the conversation with Kevin about how Unified Patents operates, discuss Unified Patents’ new program for targeting Standard Essential Patents (SEPs), debate whether the patent troll narrative has been overblown, talk about the patent quality problem, and delve into some other patent policy issues related to IPRs and the PTAB. We also find out what Kevin has in common with George Costanza!

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Gene Quinn – Clause 8 – Episode 13

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On the Clause 8 Podcast, our own Eli Mazour talked to Gene Quinn about starting and running IPWatchdog.com – the most influential IP-focused website in America.  They also talked about the IP policy landscape in Washington, how to effectively impact the policy making process, and various patent issues.  #IntellectualProperty #Patents #Podcast

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