PatentGuard - Innography

Intellectual Property Title Assurance

Innography's PatentGuard is a managed service that analyzes a patent portfolio to identify potential patent title issues and report measures to repair broken title chains where possible. PatentGuard provides portfolio managers with a certified audit report of any existing issues to help assure the asset is properly protected.

Securing Patents as Financial Assets

Traditionally patents have been primarily a means of protecting intellectual property from competitors, but over the past ten years have become increasingly important as financial assets. It is estimated that patent values range from a minimum of $38K (on a cost-basis) to millions of dollars in potential licensing revenue.

Organizations that do not apply proper and continuous governance principles to their patent portfolio risk title issues that may compromise their right to future sale, litigation, or licensing revenue. A simple break in the chain of title can result in the loss of all rights to a patent, rendering it useless in court. In fact, there are hundreds of thousands of patents identified that have title issues or chain of ownership discrepancies.

Inherent Flaws in Patent Ownership System

One significant vulnerability of patent title ownership is the relative ease with which title changes can be processed through the U.S. Patent and Trademark Office (USPTO). Furthermore, the responsibility for verifying accuracy rests not with the USPTO, but with the patent owner(s).

In addition, the USPTO has a strictly enforced window of 90 days to correct any issues with a patent title – whether from theft, fraud, or clerical error, before it becomes relatively unfixable. Data from the U.S. Federal Court of Appeals over the past decade shows more than a thousand cases in which patent litigation was dismissed because the patent owner did not have clean patent title ownership, resulting in lost damages ranging between $2M and $50M per patent.

For companies with significant patent portfolios the task of auditing patent titles can be labor intensive and costly. Activities such as bankruptcy, mergers & acquisitions, licensing, partnerships, or even fraud or theft can cause ownership complications. Factor in the complexities of global licensing deals or merger and acquisition activities and the labor and difficulty of protecting patents are multiplied.

Risks to Organizations

There are many ways that patent title issues can impact the core operations of an organization including:

• Lost Patent Assets: Minimum of $38K spent to acquire a patent and in many cases the true value is much more
• SOX 404/Internal Record Controls: Sarbanes-Oxley and Delaware Supreme Court requirements to monitor material assets from fraud
• Goodwill Impairment: Annual requirement that can cause restatement of earnings if impairment is not caught immediately
• Loss of Right to Sue: $2M-$50M average loss of damages
• Loss of Licensing Revenue: Patent licensing revenue is at risk without a clear title
• Loss of Strategic Value: Impact to an organization's current and future product strategies

The PatentGuard Solution

To address the growing concerns around the complexity and cost of verifying patent title ownership, Innography has created the exclusive PatentGuard solution to address the many possible patent title issues. With this offering, companies can protect revenue streams and ensure a strategic future while complying with regulations.

• Issue Reporting: PatentGuard delivers a comprehensive report that can also be used to provide evidence to auditors of Patent Record Controls and ensure compliance for existing and future regulations
• No Human Resources Required: PatentGuard is a turnkey solution that enables protection of patents without additional human resources
• Time and Cost Savings: Through advanced software analysis, PatentGuard is 5-10x cheaper and identifies as many as 50% more issues than any existing people intensive practices
• Optional International Reports: PatentGuard is available on patents from 40 patent jurisdictions and 70 countries
• Online Report Ordering: Ordering PatentGuard clean title reports is easier than ever now for clients using Innography's Intellectual Property Business Intelligence solution. Order reports through the online interface by simply selecting the patents on which you want to perform a PatentGuard title report and select ‘run report'