Naomi Assia & Co. – Law Offices, Patent Attorney’s and
Notary
Creating and Commercializing
your Patent Portfolio
“Supersize” your profitability!
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Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
nassia@computer-law.co.il
office@patentech.co.il
Israel is known for it’s high
tech industry – Why?
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
Israel:
A Silicon
“Wadi”
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Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
Recent Amendment to the
Research & Development Law
Allows the transfer of know-how abroad
Allows the transfer of manufacturing
abroad
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
Contributing Factors to
Hi-Tech Development in Israel:
Funds offered by the Chief Scientist of the
Ministry of Industry & Trade
Bi-National Funds
Bird - F (U.S.A - Israel)
Ciirdf (Canada - Israel)
Government Support for Marketing Activities
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
How do you make money out
of knowledge?
Commercialize your Patents
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
Why Commercialize Patents?
• Maximize returns on your patents investments
with little “out of pocket” expenses.
• Utilize and profit from dormant patents that has
great monetary value.
• Promote your technology and strengthen your
position in the field of your business – be the
market standard!
• Create additional shareholder value for your
company.
• Promote your long term financial and
technological strategy.
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
Why Commercialize Patents?
Cont…..
• A change of your company strategy can
set existing patents adrift – make sure you
don’t loose your investment!
• Patents are often sold to others under an
M&A deal to lower costs
• R&D companies often focus on developing
technology and not making commercial
products! R&D Patents are often shelved
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
Why not to Commercialize
Patents?
• Run the risk of long and costly litigation.
• Market aggression tactics and risk of
repercussions.
• Lack of in-house know how .
• Problems Identifying profitable patents.
• Knowledge of commercialization techniques.
• Busy and distracted CEO’s cant focus on
maximizing profits through IP enforcement.
• Oversight of unseen sources of revenue.
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
How do you commercialize
Patents?
• License your IP to those that really need it!
• Cross-License your IP in order to lower development
costs – create monetary value!
• Enforce your rights against Infringers!
• Promote market research and technology awareness in
your organization
• Create and manage a commercial IP enforcement
program for your organization.
• Centralize “command and control” of your patents.
• Inventory and understand your own technology!
• Explore the applicability of your technology to other
fields.
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
Problems to look out for:
• Protect your reputation – try outsourcing
enforcement policies!
• Beware of “Barking up the wrong tree”.
• Redundant patent enforcement – If the
technology is valueless, don’t invest in it!
• Choose your battles wisely.
• Work with professional's!!
• Be sure of your facts!
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
Your Problems Solved!
• Use smaller patents firms as your central patents
“command and control” to lower cost and get full
devotion.
• Outsource your dormant and shelved patents to
professionals – let them fight for your rights with no risk!
• Evaluate your existing patents – identify Worthy
Patents!!
• Don’t be afraid to litigate! If an infringement is found, you
will profit by trial or settlement.
• Work on a contingency basis with outsourced patents
legal “know-how”.
• Build and manage a commercial patents enforcement
program.
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
What is a “Worthy” Patent?
• A worthy patent would be valued as a
derivative of it’s potential profitability.
• Which companies are it’s potential infringers?
are they multi -national organizations?
• The valuation would be calculated based on the
anticipated five years of sales and royalties
(between 1%-3%).
• Some infringers could go for “quick” patent
purchases of specific patents with a value of
between $50,000-$100,000.
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
Why act now?
• Upcoming reforms with the USPTO:
– Limitations on willful infringement.
– Limitations on Compensatory damages.
• Changing Judicial trends are occurring
• Wrongful use of the Judicial System by
Patent Troll’s
• Enjoy the fruits of your labor now!
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary
Summary
• Learn from successful “Patent Rich” companies
such as IBM.
• Maximize revenues from your hard earned and
accumulated Patents .
• Maximize your shareholders return on past and
future investments!
• Don’t loose track of your technology!
• Centralize your patents “Command and
Control”.
• Study changing and adapt to market trends
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary