Technology Forecasts

I’ve talked a lot in recent posts about the changing IP landscape, and the measures being taken by companies to address those changes.  One of the main challenges I’ve seen is the often time-consuming and tedious task of evaluating a patent portfolio, particularly to identify chain of title issues. Maintaining a clean chain of title is crucial, because without it, you lose the right to take action on that patent leaving it not only worthless to the owner, but also useless in court. Making matters worse, the United States Patent and Trademark Office (USPTO) does not validate accuracy or authorization when making changes in IP ownership records. Most patent holders take the title for granted, but 10-40 percent of patents have chain of title issues due to the lack of maturity in the patent infrastructure. To complicate matters even further, the USPTO office maintains a strictly enforced 90-day window to correct any issues with a patent title before it becomes irreparable.

Keeping patent titles in check is becoming a critical business function, yet remains a challenge for today’s IP-centric corporations.  The most common use cases include M&A due diligence, IP monetization/licensing, and litigation due diligence.  Each of these scenarios potentially represents millions of dollars to the company, and yet the due diligence for chain of title leaves much to be desired, with only 50 percent or so of the issues being found in conventional due diligence processes. In fact, we’ve estimated that lack of record controls and monitoring add up to over $7 billion worth of patents stricken with title issues.

There are several instances that contribute to chain of title problems such as missing inventor assignments, security liens on patents, misreported M&A, recordation issues, theft, and a host of other fascinating examples.  A simple human entry error such as a typo could jeopardize the patent value. And these are relatively simple cases of how title issues can compromise patent ownership, so imagine the problems that occur once bankruptcy, mergers & acquisitions, licensing, partnerships, or even fraud or theft come into the picture.

In response to this growing issue we created PatentGuard™, the world’s first automated IP Title Assurance Platform. PatentGuard is a managed service from Innography that provides portfolio managers and attorneys with an audit report of potential issues, as well as recommending corrective actions to resolve them, assuring the asset is properly protected.  Following an initial scan, PatentGuard can be used to provide an ongoing, cost-effective monitoring service to mitigate future patent title risks.

This is just another example of how we at Innography listen to our customers, and provide IP-related solutions that are growing the IP financial marketplace. For more information on PatentGuard, call us at 1.512.306.8688. We look forward to seeing how we can help you protect your portfolio.

Last week there was a rumor that Microsoft’s real intention behind acquiring Yahoo is around valuable IP. This article talked about how everyone was scrambling to find out which patent Yahoo held that was so critical to Microsoft.  This was interesting on two levels: 1) what IP asset is so valuable to warrant billions of dollars to purchase Yahoo, and 2) what would Microsoft do with that asset if they acquired it?

While I admit this is the first I had heard of the rumors, I can’t say that I’m surprised.  Microsoft has been heavily attacked on multiple IP fronts with several hundred of millions to billions of dollars judgments against them.  Depending on where they are going in the future, they know the price of not innovating and what it costs to get it wrong.

I think the true take away from the story is that patents are a huge financial asset and are now a large focus of acquisitions.  However, the lack of solutions to find, assess and financially analyze patents is the big pain.  All of Silicon Valley is scrambling to understand what is so valuable, but they will all fail without some synthesis of business, legal and IP/technical information.  For tax accounting, risk analysis, forecasting and financial metrics, patents have been neglected in how companies manage them like true financial assets. 

As more stories like Microsoft surface, I predict the evolution of standard industry financial practices for patents.  The only way to do so will be to interconnect with financial accounting systems, ERP systems, HR systems, etc to get a completely seamless picture of patents as financial assets.  Imagine being able to attribute patents to product revenue, market growth, HR incentives, product planning, SOX compliance reports and tax returns.  All other financial assets have been incorporated into this model, and I predict this will become standard operating procedure within the next 5-10 years. 

As Microsoft knows better than anyone, the value of Yahoo is not just in operations, but in future markets and protection against new threats.  I’m passionate about this future and believe we are at the Early Majority phase where patents will become the first assets to be valued for daily operations.