Licensing Executives Society
(U.S.A. and Canada), Inc.
PATENT/IP BROKERAGE STANDARDS
COMMITTEE
Paul Greco
Senior Vice President
ICAP Patent Brokerage
Issues to Address
• PROBLEM: PATENT / IP BROKERAGE PERCEPTION IN
MARKETPLACE GENERALLY NOT GOOD
• LEGISLATION & REGULATION IS NOT THE ANSWER
• SOLUTION – STANDARDS ADOPTED BY RECOGNIZED IP
INDUSTRY LEADER - LES
• As a consequence of recently delayed and unsuccessful
legislative initiatives in the patent space, as well as
general negative perceptions in the IP transaction
community regarding IP brokerage, it is in the
participants’ respective best interests to develop
baseline best practices and standards by which they
facilitate and conclude IP transactions in the
marketplace.
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Objectives & Focus
• OBJECTIVES AND FOCUS:
• Create Identifiable Areas in IP/Patent Brokerage for
Standards (i.e., engagement, conduct, documentation,
manner of payments, etc.)
• Identify and articulate the specific standards for those
areas of IP/Patent Brokerage
• Manner of implementation of agreed-upon standards for
IP/Patent Brokerage
• Result should be increased dollar amount and volume of
IP transactions in the market as well as increased trust
with clients
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Possible Standards to Explore
Some Areas to Explore for Possible Standards:
1.
2.
3.
4.
5.
6.
7.
8.
9.
IP Owner/Brokerage Engagement Agreement
IP Owner/Brokerage NDA & Brokerage/Prospective Buyer NDA
IP Purchase Agreement (IPPA)
IP Assignment
Due-Diligence Questionnaire
Encumbrance Disclosure (white lists, black lists, liens, etc.)
Negotiations (competing bid disclosures, other party interest, etc.)
Auctions (public vs. private, price guidance, minimum bid, etc.)
Information Disclosure (Chain-of-Title Report, EOUs, claim charts,
file wrappers, valuation reports etc.)
10. License (Cross-License, Grant-Back License, etc.)
11. Marketing
Within each of the above, it would also be prudent to determine the
scope of possible acceptable variants (i.e., term, commission rate, etc.)
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Priorities of Standards
PRIORITIES OF STANDARDS:
1. TRUST – What standards can best build and restore confidence in IP
brokers?
a.
b.
c.
d.
e.
f.
g.
Duty to Client.
Honesty.
Communication Standards.
Managing Price Expectations.
Realistic Deadlines (buyer/seller).
Marketing Efforts.
Confidentiality.
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Priorities of Standards (Cont.)
PRIORITIES OF STANDARDS:
2. DIMINISHING TRANSACTION IMPEDIMENTS – What standards can
best break-down transaction impediments (while preserving Trust) to
increase volume of IP transactions among brokers and decrease
transaction time?
a.
b.
c.
d.
Standardized NDAs
Minimum Standard Data Room Structures
Encumbrance Disclosures (White Lists, Black Lists, etc.)
Other Information Disclosures (Chain-of-Title Reports, file
histories, EOU, claim charts, market studies, valuation reports,
projections of market capture, etc.)
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Priorities of Standards (Cont.)
PRIORITIES OF STANDARDS:
3. UNIFORMITY OF AGREEMENTS – What agreements need to be
standardized in an effort to increase efficiency in IP transactions?
a.
b.
c.
d.
e.
Engagement Agreements
IP Sale Agreements
Assignments
NDAs
Non-Notice Agreements
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Who should Participate?
What kinds of companies / people should participate and help formulate
IP/Patent Brokerage Standards:
•
•
•
•
•
•
•
PLECs / NPEs / PIPCOs
Defensive Aggregators
Operating Companies
Universities
Patent Pools?
IP/Patent Brokerage Firms
IP Lawyers
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Key Questions
1. Are there any other areas for standards for IP/Patent Brokerage that
you feel that we might have missed? If so, what are they?
2. Regarding any of the proposed standard documents, are there forms
that you have access to that you feel might serve as a beginning
template? If so, would you be able to provide them to the committee?
3. Are there any other problem areas with IP/Patent Brokerage that you
feel need to be addressed other than through standards?
4. Are there any other mechanisms or protocols that could be used to
increase the speed and volume of transactions in the IP/Patent market?
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