Mining a Business for IP Gold

By Robert Ambrogi Esq

Is your client mining the full commercial worth of its patent portfolio? Probably not. Even within major technology companies, veins of IP gold often go undiscovered.

Whether you are an IP attorney who represents multiple companies or who works inhouse for just one, you can help your client discover hidden gold among its patents – and enhance your own value in the process.

Patent mining is a multi-step process that begins with cataloging and organizing a company's patents and ends with a boost to its bottom line. That boost comes through IP partnering, licensing and litigation that might otherwise have remained unearthed.

The payoff can be huge. IBM Corporation, for example, brought in $1 billion in business in 2005 through IP management. Licensing accounted for 39 percent of that and joint-development deals with other companies made up another 36 percent.

But to be done right, patent mining requires a company to make a strategic, long-term commitment to the process. A lawyer's guidance is essential, but patent mining requires more than just legal expertise – it also requires the involvement of experts in the strategy, processes, technology and the industry.

Through it all, the lawyer's role remains paramount, both in ensuring that clients achieve the full value of their IP and in ensuring the necessary expertise – legal and otherwise – to get the job done.

The Need for Experts

The process of mining the gold from within the hills and valleys of a company's patents involves several key steps:

  • Conducting a thorough inventory of the company's IP
  • Ensuring protection of the IP through patents, trademarks and copyrights
  • Mapping the company's patents by their importance to its businesses or the businesses of others
  • Identifying current value opportunities through licensing or litigation
  • Identifying future value opportunities through partnering, licensing and other means

At each step of the process, experts play a central role. However, the type of expert required and the role the expert plays vary widely depending on the step, the technology and the industry.

By way of example, Bill Hueter, vice president of business development for IMS Expert Services, describes his work for a major U.S. technology company with a large patent portfolio dating back several decades.

One of the company's first steps towards discovering hidden value was to group its patents into large buckets. Technology experts delivered by IMS helped the company decide which patents had commercial potential and which did not.

Of the patents that went into the commercialization bucket, experts are currently helping the company map how the patented technology applies to other industries and to actual products on the market. With that knowledge in hand, the company, through its lawyers, could pursue licensing agreements or, if necessary, litigation.

In that example, the company came to IMS with its portfolio already organized and a current need for technical and scientific experts to help mine its value. Others come to IMS when they are just starting down the road of commercialization; besides technical and scientific experts, they may require experts in the process of patent mining to help them lay the groundwork.

"Well before getting to the point of commercializing its IP," Hueter explains, "a company may need help starting out at step one, learning how to identify what's in its portfolio, how to organize it by business units and how to compare it to other companies."

Companies also sometimes require industry expertise, Hueter notes. He offers the example of a large consumer-products company that owns a technology of interest to the pharmaceutical industry. Lacking internal expertise in marketing to the pharmaceutical industry, the company approached IMS for help in identifying an outside industry expert to help research and secure licensing opportunities.

Leaders in IP

"We provide experts in four areas central to IP commercialization: strategy, process, technology and people," says Hueter. "We provide experts, but the experts we provide map to the needs of the client."

Because more than two-thirds of its expert searches relate to IP litigation, IMS is better qualified to handle IP-related searches than any other expert-search firm, Hueter believes. "We understand the IP world better than anyone who provides experts."

At larger companies, patent mining is often spearheaded by the general counsel. But outside counsel too often overlooks their role in the process, Hueter suggests. IP lawyers are as much business consultants these days as they are legal consultants. They should ensure that their clients, whether large or small, are mining the full value of their IP and they should help provide whatever resources they require to reach that end.

"If the outside lawyer can help add value to the client's business," says Hueter, "the client will place greater value in its relationship with that lawyer."


Robert Ambrogi Esq

We are proud to partner with an author of Bob’s caliber to provide exclusive articles for our legal clients and leading industry experts. Robert J. Ambrogi is a news media veteran and the only person ever to hold the top editorial positions at the two leading national U.S. legal newspapers, the National Law Journal and Lawyers Weekly USA. He is currently a Massachusetts lawyer who represents clients at the intersection of law, media and technology. He is also internationally known for his writing and blogging about the Internet and technology. Media and Technology Law Bob represents a range of businesses and individuals, concentrating in print and electronic media companies and the editorial, sales, marketing and technology professionals who work in them. He also counsels businesses and individuals in employment matters. Arbitration and Mediation An established professional in alternative dispute resolution, Bob has been an arbitrator since 1994, focusing on labor and employment and securities disputes. A mediator in a range of civil disputes, Bob completed the training required by Massachusetts law to protect confidentiality.

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