Patent Monetization: Buying and Selling

​​Patently Strategic - Patent Strategy for Startups

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In this episode, we take a deep dive into the war games filled world of patent buying and selling. We are joined today by special guest host, Louis Carbonneau, Founder & CEO of Tangible IP. Mr. Carbonneau is a recognized expert in intellectual property with close to 30 years of professional US, Canadian, and international experience in all facets of intellectual property law and business. His firm is the largest brokerage firm in the world and has transacted over 4,500 patents in the past decade.
When we sat down with Louis, we hoped to be able to provide our listeners with a 101 style talk on the ins and outs of patent monetization. What we got was so much more and so very consistent with our mission of helping our audience see around corners and help their future selves. Louis begins with some excellent historical perspective and an overview of the state of the market, but really drives it all home with a plethora of forward-thinking strategies that make for more robust, defendable, assertable patents. Patents are a long game. The little things you do now can have tremendous impact over the next 15 or more years of your business journey and it’s vital that inventors and practitioners start keeping these strategies in mind, if they have any hope of crafting battle ready, commercial-grade patents.
Louis is joined today by our always exceptional group of IP experts including:
* Ashley Sloat – President & Director of Patent Strategy at Aurora Consulting
* Shelley Couturier – Patent Strategist and Search Specialist here at Aurora
* David Jackrel – President of Jackrel Consulting
* David Cohen – Principal at Cohen Sciences
* Amy Fiene – Patent attorney at Vancott and adjunct professor at BYU
* Neil Thompson – Patent agent at Torrey Pines Law Group
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** Resources **
* Show notes: https://www.aurorapatents.com/blog/new-podcast-patent-monetization

** Follow Aurora Consulting **
* Home: https://www.aurorapatents.com/
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* LinkedIn: https://www.linkedin.com/company/aurora-cg/
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* Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!
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Note: The contents of this podcast do not constitute legal advice.

Chapters

1. Intro (00:00:00)

2. Strategy tidbits: AFCP 2.0 follow-up (00:02:14)

3. Louis introduction (00:05:06)

4. Market forces and historical context (00:11:06)

5. Who's buying and selling? (00:16:27)

6. Proposed legislation: Pride in Patent Ownership Act (00:22:53)

7. Proposed legislation: Unleashing American Innovators Act (00:23:50)

8. What you can control about the market for your patent (00:26:39)

9. Patent sales vs. technology transfer (00:28:34)

10. What buyers want: attributes of a marketable patent (00:32:21)

11. Prosecution strategies for future proofing against case law changes (00:34:53)

12. Time vs. exhaustive balance when searching (00:36:40)

13. The problem with examiner prior art searches (00:37:16)

14. The patent industry conflict of interest problem (00:40:40)

15. Other requirements for selling (00:44:01)

16. Enforceable claims (00:44:35)

17. Cascading CIPs (00:46:36)

18. Unnecessary restrictions: giving in to examiners too soon (00:49:18)

19. Increased leverage with foreign patents (00:54:39)

20. Working with examiners (00:56:27)

21. Meaningful, commercial grade patents (00:57:27)

22. Drafting beyond the invention (00:58:07)

23. Outro (01:00:50)