Come Meet GIS at the LES Annual Meeting, October 16-19 in San Diego

GIS invites you to attend their workshop on Tuesday, October 18, 2011 from 3:45pm - 5:00pm

The topic will be THE IMPACT OF RECENT CHANGES IN PATENT LAW: SUCCESSFUL SOLUTIONS.

Recent case law is having a tremendous impact on licensing strategies. In this workshop we investigate problems that arise from recent changes in patent law and how they affect patent licensing. Particularly, the workshop focuses on how the licensing industry is adapting and finding new solutions for effective licensing strategies. Issues of interest such as obviousness (KSR), patent exhaustion, DJs (Declaratory Judgments), patent reform, direct v. indirect infringement, and calculations of damages, for example, which have impacted the licensing industry are addressed. Specifically, a general approach to dealing with recent changes in patent law is addressed and the workshop focuses in on problems specific to the High Tech industry.

Charles Neuenschwander, Principal, IPLC
Marc Pepin, Manager, Patent Intelligence & R&D, GLOBAL INTELLECTUAL STRATEGIES
Nainesh Shah, Director, Worldwide Licensing, STMICROELECTRONICS
Matthew Vella, Senior Vice President, ACACIA RESEARCH GROUP LLC

We look forward to seeing you there!  http://www.lesusacanada.org

Maximizing The Value of Your Portfolio : Patent Acquistion

Acquiring patents is a strategy many companies use to;

• Supplement an existing portfolio for wider product coverage,
• Acquire IP protection when launching a new line of business or,
• Increase portfolio strength in licensing negotiations.

However, patent purchase can be a risky investment as the portfolios can be expensive and the value of the patent is not always immediately evident. GIS can help you to identify key patents and provide you with the information you require to make an informed decision to purchase or not.

Auction transactions: Let GIS review both the patents and the market prior to the auction, allowing for an informed decision on the value of the portfolio before the bidding starts.

Private sale transactions: Private sale portfolios vary in size, and have a limited timeline from review to bid. Many IP professionals have limited time to evaluate a large number of patents in a very short time frame. GIS experts will triage and review the portfolio and provide a manageable amount of information, based on customer requirements, to help with the decision making process before it becomes a missed opportunity.

Contact us today for more information.

Castles built on sand - Patent Valuation

My presentation at LESI in London last month was asking the question, how can you put a value on a patent if you don't know who is infringing it? And when I say who, I mean; what company, what products, and what is the revenue of that product in the patent's jurisdiction.
A patent is a negative right, that is the right to exclude. If no one is using, or no one wants to use your invention, you patent if of little value.

Interestingly enough, there were two main answers to my question:

• Most valuation companies come up with a value without looking into who potential infringers are. These valuations are Castles build on Sand in my opinion - values with no firm support.
  
• One innovative company structures financial deals where a companies IP is obtained by a friendly 3rd party for a price. This price is used as the basis of establishing a value based on the market value approach.

How about you? Is your valuation built on sand?

I'm back from LESI in London

I'm back from the LESI (Licensing Executive Society - International) annual meeting in London, UK where I presented with Jeoren Langendam of ML-BD on June 6th.
There were approximately 650 attendees; a mix of legal, technology transfer, and licensing professionals.

U.S. Supreme Court Rules on the "Clear and Convincing Evidence" Standard

In a unanimous decision, the U.S. Supreme Court in the the case of Microsoft Corp. v. i4i Ltd ruled that an accused infringer must prove its invalidity defence by clear and convincing evidence. The following questions where adrressed:

(1) whether "a defendant in an infringement action need only persuade the jury of an invalidity defense by a preponderance of the evidence"; and,

(2) whether "a preponderance standard must apply at least when an invalidity defense rests on evidence that was never considered by the Patent Office in the examination process."

The answer to both of these questions is no.

For further details on this ruling see the link below.

http://www.bracewellgiuliani.com/index.cfm/fa/news.advisory/item/2159223f-3eb5-4677-b13d-e3125db23f6d/22Supreme_Court_Unanimously_Maintains_High_Hurdle_for_Invalidity_Defense.cfm

Prior Art & Validity Analysis

When involved in patent litigation or licensing, there will likely come a time when you are accused of patent infringement. When this happens, there are three common options open to you:

1. Rebut the claims of infringement;
2. File a counter claim of infringement;
3. Invalidate the asserted patent claims.

If you determine that your product does not infringe the patent then option 1) is the first path to consider. Option 2) can be taken if your own patent portfolio covers the accuser’s products and can be the basis of a cross-licensing agreement. However, given the prevalence of non-practicing patent entities (sometimes referred to as “patent trolls”) or weaknesses in your own patent portfolio, you may be left with only option 3) as a practical course of action.

Though a granted patent is assumed to be valid, the validity is most often attacked on the grounds of “anticipation”, or “obviousness” based on prior art.

GIS’s patent and technical experts pride themselves on their ability to find relevant prior art to support an argument that a patent is invalid based on either anticipation or obviousness.

Although the search process is customized to fit each situation, in general, GIS experts follow the following process. Starting with a small number of carefully researched documents, we choose the most likely reference to follow. This in turn uncovers new documents, which in turn lead us to further documents. The end result is one or several relevant prior art documents as well as the search path taken. You receive a small, manageable number of documents to evaluate, the process is quick and efficient, and having the search path documented, it is easy to continue the search at a later date.

Often, before you come to GIS for prior art searches, you will have done some searching on your own. To take this into account, we will keep you up to date on our progress in order that we may combine our knowledge with yours to ensure that the same searching is not repeated unnecessarily. It also gives you the option of shortening or extending the search time based on the results discovered to gain the maximum benefit from your limited budget.

GIS will search both public patent and technical databases as well as our own, internal Technical Library which includes over 1,800 technical references and data books dating back to 1966.

External technical experts affiliated with GIS may also be consulted, if required.

Clients are typically presented with a short list of the most relevant art, along with explanations of the relevance. A detailed search history will also be delivered which will aid in any future searches.

Prior art searches are also commonly used when conducting due diligence on a patent for sale or purchase, or when performing a patent valuation.

Contact us today for more information: http://www.gistrategies.com

Reverse Engineering

Successful patent licensing and litigation relies upon the ability to conclusively show evidence of infringement. One of the best methods of building a definitive case is to obtain evidence with the use of reverse engineering techniques.

Finding evidence of patent infringement based on targeted reverse engineering is one of GIS’s main strengths. What sets GIS apart from the competition is our formal patent background coupled with our extensive industry design experience allowing us to analyze patent claims in depth to identify what reverse engineering support is needed to demonstrate infringement.

Visit our website for more details: http://www.gistrategies.com