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To encourage investors the IP system must provide stability and predictability, says USPTO head

IP is the engine that makes economic and cultural developments work and the USPTO keenly focused on facilitating this goal.

That was the message delivered by Undersecretary of Commerce and Director of the United States Patent and Trademark Office, Andrei Iancu, at the Second Annual Intellectual Property Awareness Summit in New York on November 29.

CIPU, CTV, Columbia University

IPAS was held by the Center for Intellectual Property Understanding (CIPU), an independent non-profit, in conjunction with the Columbia Technology Ventures, at the Columbia University’s School of Journalism.

“For the IP system to work as intended,” Director Iancu told the audience of IP owners, creators, executives and educators, “we must make sure future IP laws are predictable, reliable and carefully balanced.”

Director Iancu, who holds degrees in aerospace and mechanical engineering and who has taught at UCLA, said he believes that it is really important for new members of congress coming into office in January, as well as existing ones, be informed about the importance of intellectual property.

“They should be aware why IP is important to the economy and to America’s standing in the world and competitive position.”

“I would urge folks in this room,” he said referring to the IP professionals and educators present, “to talk about these issues with members [of Congress] in ways that relate to their priorities and constituents.”

A Different World

The Director told the audience that the battle for 5G is not likely to be limited to giant American companies but is international and being waged by the smallest and biggest countries; from Singapore, for example, to China.

“We live in a different world,” he concluded. “For the United States to maintain its competitive leadership it is critically important that we have an IP system and innovation and entrepreneurship ecosystem that encourages innovation; that provides stability and predictability, so folks can invest here in the U.S. confidently.”

The audio file of Director Iancu’s remarks and q&a is available at www.ipawarenesssummit.com.

IBM, Priceline, George Mason University

Other featured speakers at IPAS 2018 included Manny Schecter, Chief Patent Counsel of IBM and a member of the board of directors of the Center for Intellectual Property Understanding (CIPU); Jay Walker, inventor, entrepreneur, TEDMED curator and founder of Priceline.com; and Adam Mossoff, Director of the Center for the Protection of Intellectual Property (CPIP) at George Mason University College of Law.

IPAS also included 17 other speakers, four panels and three workshops focused on the IP literacy requirements of IP owners, creators, educators, investors and the public. For the full IPAS 2018 program, presenters and partners go here.

Image source: Russell Cusick Studio 

Rich values for IP services providers defy investor expectations

Prices for companies that support and sell IP services and analytical software remain surprisingly strong, even as patent licensing and sales continue to decline.

Their success appears to be fueled by the very problems facing patents: lower values and lack of certainty.

IP tools providers are the proverbial sellers of picks and shovels; the “miners” take the primary risk. Most are satisfied with the steady cash flow, while their clients make the big bets in R&D and litigation. Uncertainty makes investing even more dangerous and the information premium more valuable.


For the full IP services deal story, “Defying the monestisation market” in the September IAM magazinego here. In this issue the Intangible Investor explores recent IP service firms transactions and their prices.

Examples of IP services successes include CPA Global’s 2017 acquisition by private equity firm Leonard Green & Partner’s for 2.4 billion pounds ($3.1B USD). Cinven had acquired the firm in 2012 from Intermediate Capital Group for around £950 million ($1.3 billion), backed
by $555 million of debt financing.

In 2015, CPA Global – with approximately $12 million in revenues and no profit – acquired Innography for an undisclosed amount. An industry-insider told IP CloseUp it was likely between $80 and $90 million, or about seven times revenue. Innography, with a strong reputation, had raised $14 million in venture capital.

AI Driven

Thomson Reuters sold its IP and Science business in 2016 to Onex and Baring and Private Equity Asia for $3.55 billion. The company is now Clarivate Analytics.

Among the newer and more interesting entries in the IP services space is ClearAccessIP, a Palo Alto, CA-based firm “that indexes patents, looks for vulnerabilities in a corporation’s patent strategy, and finds opportunities in a patent collection for further value.”

Founded by Nicole Shanahan, a young patent attorney who served as a researcher for IP scholar Colleen Chien at Santa Clara University College of Law. Professor Chien is a member of the Clear Access IP Advisory Board, along with former AIPLA president Wayne Sobon.

“I am essentially trying to build and democratize a marketplace platform because not all patent holders and sellers can afford the large transaction firms,” she says. “I’m also solving a very old problem and putting docket management in the cloud.”

An extensive interview with Shanahan appears in Software Engineering Daily. The audio can be found here; the written transcript, here.

Ms. Shanahan, it seems fair to inform readers, has been living with Sergey Brin, founder of Google and President of its parent company, Alphabet, Inc., which, historically, has been dubious about strong patents.

New Wave

IP services and software providers, especially those using the latest algorithms, may represent a new wave for beleaguered IP holders and their law firms seeking to manage patent risk. The computing strength and analytics capability they offer may be just what some IP holders and margin-conscious law firms need to compete, or these companies may simply be repackaging the outsourcing mantra for the AI age.

These relationship-driven, technology-focused service providers are likely to grow in value as global patent applications and portfolios increase and uncertainty lingers. An improved outlook for patent licensing will make them even more attractive.

Image source: softwareengineeringdaily.com; clarivate.com; cpaglobal.com 

Responsible Patent Licensing is focus of Wall Street event

Not all patent licensing businesses are alike.

“NPE 2016: The Business of Responsible Licensing,” scheduled for March 22 at the Convene conference in New York, will differentiate patent monetization companies by examining their business models, strategies and the managers who run them.

The conference will focus on the non-practicing entity (NPE) industry, including both public and private companies. In 2015, the NPE 2016 brought together leaders from the licensing company sector and the wider corporate IP and investment communities to discuss the challenges and opportunities of running a patent licensing business, especially in today’s challenging climate.

NPE 2016 is the only gathering that examines how NPEs operate and contribute to the innovation and the economy.

3J6A3349Moderator-led panel discussions with audience Q&A at the end of each will be featured. Sessions are designed to focus on the specifics of building and running successful NPE, as well as on the opportunities available to investors.

Beyond Monetization

This year’s sessions will consider licensing best practices, building and managing a patent portfolio, licensing dos and don’ts, litigating in Europe once the Unified Patent Court has been launched, licensing opportunities in new sectors and moving IP commercialization beyond monetization.

Last year’s attendees included:

• NPE executives
• In-house counsel and legal directors
• Private practice lawyers
• Licensing executives
• Patent brokers
• IP policy professionals
• Investment professionals

IP CloseUp readers who use the promo code IPCLOSEUP before February 19 are eligible for a $150 discount off of the full $895 registration.

For more information about NPE 2016 or to register, go here.

For he full program, go here.



Image source: convene.com; iam.com


Unwired Planet: Can Cash Position Cushion Long Sales Cycle?

With three recent Markman hearings and more than $100M in cash UPIP trading currently at $1.46 could be a good buy for those with patience and a strong stomach.

At an earnings call last Thursday Unwired Planet, Inc. (NASDAQ: UPIP)  CEO Philip Vachon reiterated his confidence in the future, and announced a renegotiated deal with Ericsson that will provide the company more flexibility going forward regarding patent transactions.

“With the modification of the Ericsson agreement during the [past] quarter, the company now has the option to acquire assets that are not subject to the Ericsson revenue share agreement,” Vachon told investors,”but that are subject to the $1.7 million of our NOL.”

Lake Street Capital senior equity analyst Mark Argento who has a “Buy” recommendation on UPIP, suggests that investors proceed with caution, but sees a $5.00 price target.logo

Sum of Parts Valuation – “Given the nature of its business model and the lack of revenue and operating profit predictability from a modeling perspective,” says Argento,” “we believe valuing UPIP on a project/IP portfolio sum of parts valuation basis is most appropriate. We take various scenarios: Low, Mid, and High range of outcomes for monetizing both its core UPIP portfolio and the wireless infrastructure portfolio acquired from Ericsson.”

Argento’s list of “Valuation” challenges and “Risks” in his report (linked above) provide useful guidance for anyone interested in public IP licensing sector.

Spend and Wait

Unwired Planet is typical of the frustrations faced by many PIPCOs that own good patents but have to spend time and money, and encounter risk, to monetize them.

Spending on legal fees and acquisition costs, without generating significant income, requires a strong constitution, even when there is cash on the balance sheet and burn rate that can be contained. Not every PIPCO is so lucky.

Image source: unwiredplanet.com; lakestreetcapital.com

New Wealth of Nations is Focus of Int’l IP Gathering

550+ to Participate in 2011 CIP Forum –

The New Wealth of Nations is the focus of a gathering to be hosted May 29-June by the Center for Intellectual Property Studies in Sweden.

It’s the tenth anniversary of the bi-annual event. If past experience is any indication, CIP Forum will be one of the more outstanding IP gatherings to be held in Europe or the U.S.

Co-organizers Ulf Petrusson and Bo Heidenhave their collective finger on the IP pulse. They know how to create a unique chemistry that attracts impassioned iPeople from far and wide. This year they are inviting executives and investors to talk about capturing and managing innovation and the role of open innovation. Among the goals is to help nations understand the impact of their new intangible wealth.

At CIP Forum it is not uncommon to hear conversations among international IP holders, valuation experts, patent brokers, investors, academics, business executives, entrepreneurs, advisors, NPEs, inventors and students. [Click here for more information about the 2011 CIP Forum.]

Seldom do (V)IP figures like this year’s chair, Ruud Peters of CEO of Philips IP and Standards, and Marshall Phelps, former Microsoft and IBM head of IP business and strategy, mix with business, engineering and IP management students, government policy makers and private equity investors in an unabashedly international setting.

Discussion and feisty debate at CIP Forum often carry over to the festivities and private dinners around Gothenburg. It starts with a welcome cocktail reception on Sunday evening, May 29, just after the my workshop.

Yes, your intrepid IP Insider has been asked to chair the 2011 Valuation & Finance Mini-Track on Sunday afternoon. I look forward to seeing some of my loyal readers there as well as a few who would rather throw tomatoes. Bring your difficult questions to The New Wealth of Nations CIP FORUM 2011- ENG in Gothenburg in May, and don’t be afraid to challenge current IP practices.

After all , IP management has a short history — a few decades, at most — and, more than anything, CIP Forum is about breaking new ground for innovation and IP capital everywhere.

Illustration source: cipforum.org

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