Patent Licensing & Portfolios

Patents convey the right to exclude others from making, using or selling the inventions claimed in the patents in the country or countries that issued the patents. A patent owner may choose to retain those rights to prevent others from practicing the inventions, particularly when those inventions are embodied in products produced or services provided by the patent owner. Alternately or additionally, the patent owner may instead choose to license some or all of those rights to other entities to generate licensing revenues. Depending on the licensing strategy, license agreements may convey exclusive rights to a single licensee or non-exclusive rights to multiple licensees.

Barceló, Harrison & Walker LLP handles a wide variety of licensing and transactional matters involving all forms of intellectual property in a diverse range of businesses. Our experience includes licensing, assignments, patent pool evaluations, technology transfer, consulting contracts, determinations of claim essentiality to standards, and confidentiality agreements.

In Mergers and Acquisitions, the subject matter and geographic coverage and enforceability of intellectual property may be a key factor in determining the value of the assets to be merged or acquired. Barceló, Harrison & Walker LLP is experienced in assisting clients in evaluating patent portfolios to facilitate their business strategies, for example by assessing the enforceability and industrial relevance of patents and patent applications assigned to a company that is a target for merger or acquisition.

Effective portfolio development and analysis can be used to maximize the market value of patent portfolios to support core businesses, to generate licensing revenue streams, or to increase portfolio value for potential mergers or acquisitions. Dormant patent portfolios, or patent portfolios that are poorly understood, poorly organized, or poorly categorized, can represent a large but underutilized investment. Barceló, Harrison & Walker LLP applies a strategic approach to intellectual property development and exploitation and works closely with our clients to leverage their intellectual property assets effectively and efficiently. We can creatively and efficiently analyze and evaluate patent portfolios to maximize their value while tailoring the approach to the particular client’s needs. For example, while a client developing its patent portfolio may benefit from an invention mining process, a client in need of a counter-claim in litigation may require enforceability screening of patents in their existing portfolio. We have developed and refined detailed process flows designed to reveal trustworthy indications of patent or portfolio value in a variety of settings. Our analysis brings value because it can help a client realize a previously untapped return on investment from the subject patent portfolio and determine focus areas for further investment to balance the patent portfolio to meet strategic goals.