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While patents provide early indications of technologies coming from competition they can also be a critical source of intelligence for out-licensing research. Most companies choose to disclose the finer details of their internal research within patents and such information can be crucial for your evidence of use analysis.
Besides revenue generation, out-licensing can help with expansion of business in new markets, faster time-to-market in adjacent geographies and creation of new products despite lack of resources or funds. Patent Databases like PatSeer provide powerful IP analytics with high quality insights to help you with your out-licensing background research.
IP monetization by way of out-licensing or sale is becoming the need of the hour with most patents never generating any ROI. For Universities, Inventors and other NPEs (Non-practicing entities), the only playbook is to monetize the IP assets created by way of out-licensing or a sale. For companies with medium to large IP portfolios, maintenance of existing IP is costly, and monetization can be the only solution to resolve IP budget issues or demands from the stakeholders for the IP department to be more than just a cost-centre.
Before beginning your monetization research, it is necessary to analyse your portfolio and determine what assets can be licensed (or sold). Patent ranking and other qualitative indicators help you save time in identifying core and non-core patents and thereby help in narrowing down the licensable art in your portfolio.
Locating the gems in your licensable art quickly
Once you have found the licensable art, its necessary to focus on those patents that have the highest probability of being licensed. Usually these are the patents which have higher quality than the others in the pool. You can rank the patents based on non-self forward citations and recent citations/year ratio. Alternatively, you can leverage ranking metrics such as PatSeer’s Citation score, Intrinsic score, or Patent Generality. You can also look at their litigation activity, family citation count, age of patent, etc. to get a holistic picture of the licensing potential.
Finding the right potential licensee and evaluating the licensee
After evaluating and ranking patents in your portfolio, you can start looking out for potential licensees. Various methods such as multi-generation citation-tree analysis, co-citation analysis, similarity search, and even traditional searches can help in identifying potential licensees that are working in the same technology space as you.
For each short-listed assignee, corporate hierarchy information can be used to know the end owner which is critical for deciding your further strategy. Insights from Patents Assignments can be used to see who is buying or selling patents in a certain technology area. Combining this information with the intensity of filing over recent years and the overall R&D investments (size of the portfolio held) in the technology area can be useful in determining if a company may have the appetite to buy or license your patent.
Refining your outreach strategy to prospective companies
Licensing can be divided into two types namely:
- Assertive or Enforcement Licensing: In case a company is building up on your technology, you can go for assertive licensing. Evaluating infringement requires generating an evidence of use. A detailed analysis of the claims of your own patents must be done first to understand the scope of the inventions they protect. Usually, the inventors are also consulted as part of this process and depending upon the type of claim such analysis can involve manually analysing infringing product information, reverse-engineering a product or even decompiling applications. In case infringing patents are found, then claims overlap analysis can help detect the percentage of overlap.
- Suggestive or Collaborative Licensing: When your technology complements the technology of another company a collaborative effort can yield the decided monetization objective. Understanding your own invention and then searching for the technologies or products that can benefit from it within patents can be a start towards this. To speed up time and effort, you can also use various word/topic maps get a bird’s eye view of the technologies a company may be working on.
Having an organized approach to the IP licensing process can help you find the right licensee and help you reach your monetization goals. Leveraging the tools provided by patent databases such as PatSeer can help provide critical insights, save time, and alleviate some of the challenges in the research process.
