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It may take over two years to get a patent approved by the USPTO, so if you haven’t checked your patent application since you filed, now may be the time. “The problem is that while your applications have been sitting in the Patent Office queue, your technology has continued to evolve,” notes attorney Steve Hansen.
“You may have made improvements or refinements to the technology. However, it is important to check pending applications and see how well they cover the technology now.”
Patent holders want patents to keep competitors at bay. If a design or formula has been modified, claims you are pursuing may no longer protect your commercial products.
One of the goals of the America Invents Act (AIA) was to cut down on patent litigation. But recently released regulations by the USPTO may do just the opposite.
AIA’s new “supplemental examination“ procedure was designed to cut down on litigation against pharmaceutical and technology companies by allowing patent owners to go back to the USPTO after a patent is issued “and voluntarily submit additional information to be considered as to whether it impacts patentability,” notes www.forbes.com.
But doing so would require “a patent owner to mount an assault in detail on the validity of his own patent,” Forbes noted, and the very act “of making these kinds of statements could … become a source of future litigation as accused infringers look for any misstatements.
IPWire notes that the proposed regulations are now open to public comment and encourages all pharmaceutical and technology CIPOs to comment to prevent expensive unintended consequences.
Like Kodak, Alcatel-Lucent, France’s largest telecommunications equipment maker is hoping to generate 500M to 1B euros in revenue in 2012 by licensing some of the 29,000 patents it owns, four analysts told www.businessweek.com. IP officers looking for ways to expand on patent revenue might want to consider a similar tactic.
“Licensing is a hot trend in the tech sector right now, but if these numbers turn out to be true, then maybe Alcatel should stop everything else and do only licensing,” Thomas Langer of WestLB Equity Markets in Dusseldorf, Germany told www.businessweek.com.
Alcatel does not plan to sell its patent portfolio, which includes voice-recognition and videoconferencing technology, Chief Executive Officer Ben Verwaayen told Business Week. “By syndicating the patent portfolio, we found a creative way to extract value without weakening ownership.” Of course, readers may be more convinced if AL had a better handle on the revenue expectations; a range of 500M euros seems more like guesswork.
Crocs Inc., maker of the comfortable shoes, is about to do what others with successful brands do to increase their revenues: license its brand beyond its core products. As reported recently in the Wall Street Journal and www.brandchannel.com, the company has “announced licensing agreements with several manufacturers as it . . . expand[s] its brand to accessories, apparel, and eyewear.”
“Licensing presents an opportunity to leverage one of our most valuable assets—the global power of the Crocs brand—by associating it with best-in-class products that go beyond footwear,” Mike DeBell, Crocs’ VP of global sales, said in a press release. “More than 200 million pairs of Crocs shoes have been sold in more than 90 countries around the world. That’s powerful testimony to the connection forged with consumers by the Crocs brand. Through strong international and regional licensing partners, we plan to extend the power of our brand and make new consumer connections.”
In addition to the company’s recently released golf shoes marketed in conjunction with Hank Haney, look for Crocs-branded hats, sunglasses, bags, backpacks, socks, gloves, and children’s apparel, among others. The key to successfully implementing this strategy could well be Crocs’ adherence to the “best-in-class” criteria.
One management risk that chief intellectual property officers should take into account when the company is considering an IPO is that they will be hit with patent lawsuits. Take Facebook, for example. “Last year, Facebook was named as a defendant in 22 lawsuits accusing it of patent infringement, double the number from 2010,” notes mybroadband.co.za. “The attacks against Facebook signal that social media have become a new front in the Silicon Valley patent wars.”
Before they filed an IPO, online game developer Zynga, discount coupon innovator Groupon, and LinkedIn had not faced an infringement action. After they went public in 2010, the patent lawsuits rained down on them. The funding associated with IPOs makes patent aggregators think they can quickly win a settlement from companies.
Ron Laurie, a specialist in IP and investment banking, cofounder of Inflexion Point Strategy and a member of BVR’s Intellectual Property Management & Valuation’s editorial board, told mybroadband.co.za that companies are most vulnerable to patent challenges when they file their intention to go public form (S1) with the U.S. Securities and Exchange Commission. “You just knew when you filed the S1 the letters would start rolling in,” he said.
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