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Maximizing Patent Monetization Value

By Aaron R. Fahrenkrog and Samuel L. Walling
June 02, 2015

In today's market, patents often have little monetary value absent a credible enforcement threat. Such a threat depends on the patentee's ability to prove infringement, survive validity challenges, and establish a defensible and supported damages model. These are not easy tasks in any case, but we have analyzed the issues faced in patent licensing and litigation discussions, and have traced backward through the process to suggest strategies that prosecution counsel might apply early in the process to influence their clients' ultimate ability to monetize patents through litigation or other means.

Patent prosecution strategy often arises in-house, or at least from discussions between in-house and outside prosecution counsel about the best strategy given the company's unique circumstances. No strategy can fit every company seeking patent protection. In-house counsel, however, might seek the best results by considering this proposition: a patent's ultimate enforcement potential highly influences that patent's value in many contexts, including offensive licensing (to generate royalties), defensive negotiation (asserting in response to a competitor's patent assertions), and asset valuation (for company valuation or as loan collateral).

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