Implementing Patent Monetization Strategies
Through Structured Transactions
Strategic Patent Acquisition:  Enhancing the defensive posture of your current
portfolio well before a competitor’s patent assertion letter arrives is the sensible
approach to protecting your company from attacks based on alleged infringement.  
Acquiring key patents targeted to the primary profit centers of potential aggressors in
your markets establishes a platform from which to respond to infringement claims or
settle pending litigation.  In many instances, acquiring such patents and making the
marketplace aware of your position can forestall infringement claims altogether.  
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Freedom To Operate:  Entering new technology markets or expanding existing
product lines across international borders requires a critical review of the applicable
patent landscape and any standards that apply to the product space involved.  
Mapping the potential IP land mines and acquiring relevant patents in advance can
put your company in a stronger position to operate without interference and to bargain
with those who use their patents to exact an admission fee from new market players
or to bar entry altogether.
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Patent Sale & Exclusive Field-Of-Use Licensing:  Increasingly patent owners are
seeking to divest part or all of their patent portfolios for a variety of reasons.  In
“double coverage” cases, for example, where patents have been acquired in the
buyout of another entity, one can monetize the value of those patents which provide
redundant or marginal coverage through outright sale.  Similarly, a company may
choose to exit a particular business and decide to capture the monetary value of the
related patent estate through sale to another party for whom the IP is core to their
business. Entrepreneurs may choose to monetize IP to help fund the growth of their
venture in their primary market by granting exclusive field-of-use (EFOU) licenses to
others for applications and geographies that are not competitive with their business
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IP-Driven M&A:  Typically those involved in corporate mergers, acquisitions, and
divestitures pay little attention to the embedded value of the relevant IP, preferring
instead to pursue a path toward transaction value based on historical financial data
and economic rules-of-thumb built around traditional accounting metrics such as
EBITDA , P/E multiples and free cash flow.  With over 70% of the value of NASDAQ
represented by intangible assets, IP should be a much more important factor in
determining an entity’s acquisition value.  For acquisition targets, IP, properly
considered, can be leveraged to achieve a better result.  For acquirors, consideration
of the target’s IP can close a price gap that would otherwise kill the deal..
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our approach ...
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