Patent Demands & Startup Companies The View from the Venture Capital Community

With the high level of interest in patent monetization and its effects on US companies, data on the topic is increasingly important. This study examines one aspect of the topic, focusing on the effects of the rising patent monetization market on startup companies. The study provides one of the rare glimpses of monetization activity outside of lawsuits. It provides both quantitative and qualitative information on the startup community’s experience with and perspectives on patent demands. Among other issues, the study tests a narrative that has circulated suggesting that patent monetization creates for venture capital investment. According to the theory, venture capitalists will be attracted to the possibility of monetizing a startup company’s patents if the company fails, and this attraction spurs investment. The study tests that narrative through the eyes of the venture-backed community itself. Results include the following: When making funding decisions, the vast majority of venture capitalists do not consider the potential for selling to assertion entities if the company fails. Thus, patent monetization does not appear to provide investment incentives. In addition, both the companies and the venture capitalists overwhelming believe that patent demands are having a negative impact on the startup community, and all or most of the demands they experience are coming from those whose core activity involves licensing or litigating patents. The effects of these demands are described in terms including the specific costs expended by the companies and the distraction to management, engineers, and other employees. Most important, participants detail the human toll that patent demands have had on entrepreneurs

The licensing and selling of inventions by US universities

Abstract Our study analyzes the patent transactions of the top 58 US universities in the yeas from 2002 to 2010. We find that 37.0% of the patents granted at the United States Patent and Trademark Office (USPTO) have been involved in a form of monetization. Among them, 29.7% have been licensed out, 5.9% have been reassigned to other universities, National Laboratories, federal agencies or non-profit entities, and 1.3% have been transferred to companies. We investigate the patent characteristics associated with each monetization channel (i.e., licensing and outright sale). We also introduce a set of survival model analyses to control for the dynamic nature of the monetization process. The transacted inventions in the portfolio (and, in particular, the licensed ones) are peculiar over several dimensions: they show higher value or technical merit, higher legal robustness, and higher complexity. Licensed patents differ from reassigned ones especially for a higher technological complexity. Patents transferred to companies are not frequent in the university core fields, but the corresponding market for technology is able to select those with higher value and legal robustness

Maximizing Intellectual Property and Intangible Assets: Case Studies in Intangible Asset Finance

As innovative companies struggle to raise funds, intellectual property and intangible assets are providing alternative ways of financing innovation. But greater awareness of them as an asset class is needed. Raising that awareness is the focus of a new report from Athena Alliance, Maximizing Intellectual Property and Intangible Assets: Case Studies in Intangible Asset Finance by Ian Ellis, a former U.S. Department of Commerce official specializing in intellectual property and international trade. The report outlines increasing, but still nascent, means of financing innovation based on these assets in public, private and venture capital markets. As industry has invested capital in research and development to develop new technology and advance other creative activities, intellectual capital has become a valuable asset class, according to the paper. In response, firms specializing in intangible-based financing are springing up, using them to raise capital for the next round of innovation.The paper details equity, equity-debt, debt, and sale-leaseback transactions, both private and public, that have helped companies raise capital, based on careful, rigorous analysis and conservative underwriting standards. For example, the author notes that in 2000, there were two public deals using royalty securitization, raising $145 million. In 2007-08,$3.3 billion was raised in 19 deals.Unlike some of the exotic financial vehicles, however, the financial products discussed in this paper are some of the most basic financing mechanisms in business. The innovation is in recognizing the value of intangible assets for corporate finance. These new financial firms are using traditional financial techniques in new ways to help innovative companies.But more should be done.One important step would be developing sound, industry-wide, underwriting standards, according to the report. For example, Small Business Administration (SBA) rules permit its loans to be used for acquisition of intangible assets when buying on-going businesses. Rules are unclear on whether those assets can be used as collateral. The paper recommends that SBA work with commercial lenders to develop standards for using intangible assets as collateral.The report builds on earlier Athena Alliance papers, notably Intangible Asset Monetization: The Promise and the Reality

Leveraging Uncertainty: Private gains at public cost by PMEs

Incidences of patent litigation have increased dramatically in recent years. A growing share of this activity is being taken by patent monetization entities (PMEs). Through descriptive statistics and case studies, this article explores the relationship between PMEs, patent litigation and market uncertainty. The lack of rigid judiciary structure within the field of software patenting has left it particularly susceptible to uncertainty. The goal is to incrementally advance the knowledge base around the subject and promote further research

A typology of technology market intermediaries

Technology Market Intermediaries (TMI) are currently emerging on the markets for technologies attempting to realize business opportunities and facilitate the technology and IP transactions supporting firms and other markets actors (e.g. universities). They aim to support open innovation, respectively facilitate more economically technology and particularly IP transactions. However, our understanding of TMIs and their roles needs to be considered incomplete. In this paper I provide evidence on the growing number of TMIs and derived a conceptual basis for a further understanding of TMIs. The inherent difficulties of intellectual property monetization present a challenge for technology based enterprises and business opportunities for IP firms. Following a literature review, I develop a typology for TMIs. Having carried out a review of the literature I compiled a mix of primary and secondary data on about 70 TMIs. Applying the 'nine business model building blocks' from Osterwalder (2004) I identify 12 different TMI types which I then consolidate into six TMI archetypes using the framework for 'business models archetypes' of Herman and Malone (2003). --typology,type,Technology Market Intermediaries

Private Ordering and Orphan Works: Our Least Worst Hope?

The political capture of copyright law by industry groups has inadvertently led to orphan works problems arising in less organized industries, such as publishing. Google Book Search (GBS) is a prime example of how private ordering can circumvent legislative inefficiencies. Digital technologies such as GBS can open up a new business model for publishers and other content industries, centered around aggregated rights holdings. However, the economic inertia that private ordering represents may pose a threat to the knowledge-oriented goals of copyright law

12th Annual Conference on Recent Developments in IP Law and Policy

Program booklet and handouts for the IP Law Center at Golden Gate University School of Law\u27s 12th Annual Conference on Recent Developments in IP Law and Policy