IP Dealmakers: The 3 Key Take-aways for IP Licensing Deals in 2015

Things are looking up.

Spending 2 days with the IP and Investment leaders in NYC this week at the IP Dealmakers Forum, highlighted for me 3 key take-aways of IP licensing in today’s business environment: Optimism, Geography, Bargains.

1) Optimism

Despite the doom and gloom the past two years, most of the discussion was centered around the discussion of a (slightly) improving marketplace – with even a flat marketplace being something to be happy with. Although nowhere near market highs of past years, BRG Capstone provided an interesting chart asking if a price rebound was a real indicator of a more optimistic market.

While this gives brokers and sellers something to be happy about, on a complimentary note, the pure licence based companies still are moving to hedge their bets by diversifying. Gene Quinn summarizes Edward Jung’s keynote, noting how diversification is helping offset some of the challenges of the past.


One interesting point I heard was Brian Hinman from Royal Philips, where he noted that even inside the Philips IP group they diversify as well via investments in startups and other portfolios:


But just because it’s looking up doesn’t mean it’s still easy. The one point mentioned several times is how for small investors, lenience entities, or single patent sales / enforcement, the market challenges still hasn’t changed for them.

2) Geography Perhaps part of the optimism is the shift to Europe and China to supplement the US. And while the US legal environment is smoothing out, it is still to unpredictable to make large IP investments and bank on a return. With a reduced time to decision, Germany seems to still be the venue of choice with the predictability of process trumping the potentially lower returns.

It was interesting to note that even in broad geographies like Europe, a focus on some specific countries still dominates like Germany. But to simply to consider German as your EU strategy – and to do so without a quality patent – isn’t enough the bigger global picture still needs considered.

Even within Asia Pacific there are countries of note, with South Korea and Japan leading the play, with Singapore looking to be the IP hub via government incentives.

In short it’s still a global business that needs managed with topics like tax structures, enforcement, bond requirements, and injunctions to consider:

3) Bargains

Discussions around the conference seemed to indicate prices seemed to be at the point where it was low, and although it may drop a little more it was low enough to start to re-invest in purchasing – particularly for those that had the backing to buy and hold.

A few people indicated that investing outside of the traditional US only IP marketplace was done and the global portfolio was a necessity. BRG Capstone noted investing in Chinese patents was one thing to seriously consider.

Wrapup: As usual, the industry is constantly changing and it is those that are adapting quickly are seeing the financial benefits. Having a licensing program for any venture requires a key team to search out and execute on opportunities, and with new geographical opportunities and IP assets seemingly at the bottom (for now), there are deals to be made.

Is it time for a strategy reboot?

This month it happened again – meeting with a company about defining their patent strategy, only for them to discover their filing and prosecution strategy was the same as it was 5 years ago when they started.  Unfortunately for them the seemingly vast changes in law, license environments, and competitive space have left them with little relevant IP to use going forward… and a hefty legal bill to show for it.  There is an inherent risk associated with filing patents – the process is longer than it takes to get some products to market, and is tremendously costly.  This issue becomes compounded for most companies as they are too small to have their own IP group, so it becomes an outsourced action to counsel, managed by a VP or R&D leader, a line item checked in quarterly meetings saying “patents are underway”.

But what are the IP leaders doing? How are they positioning for success?

Innovation as the new IP

While the majority of organizations continue to plow onwards, perhaps only adjusting the patent budget line item as needed, a few companies seem to be tackling the change head on.  And much like a canary in the coal mine scenario, some of the first moves for change can be see in the professional NPE or Innovation firms.  For example, companies like Patent Utility – formed to remove the friction of licensing in the market – has pivoted to Haystack IQ which is linking innovation and IP together for clients.  ipCreate, an innovation on demand firm (also heavily linked with IP in the executive team) is also growing,  announcing a major fundraising effort earlier this year. Last month IAM Magazine reported that publicly traded NPEs Vringo and WiLAN have also hinted at becoming more involved in product development, and R&D activities, as has Marathon following its merger with Uniloc. It is not a coincidence that those heavily involved in IP are pushing for a greater link to tangible new innovations as part of their growth (or survival) strategy.

A change in thinking

It is becoming clear that the IP professionals are seeing future of IP tightly linked to innovation programs.  As first movers they will be spending a tremendous amount of time focusing to get ahead, while traditional R&D firms doing innovation will be left well behind with their old IP strategies. So this begs the question – are R&D based companies, who are centered around innovation for survival as well, updating their IP plans to be aligned with the IP professionals path?

There is a new fight within innovation emerging and the only thing that is clear is this: It is time for Innovation + IP strategy reboot.

Top IP business insights to read (Sept 2015)

In the past month I came across 3 articles of interest and insight  – worth reading when you have the time:

If you have others to add, please let me know and I will post them as well.

October Event Calendar: IP & Business Innovation Forum

For those local to Victoria, I am helping organize an IP-Business forum in October – Mark your calendars for October 8th.  Details are below and you can register here.

Event Calendar: IP & Business Innovation Forum

Register today – limited availability

If you are a R&D leader, inventor, investor or CEO, CFO, or CTO of a growing technology-based venture join us of an afternoon seminar featuring thought-provoking discussion from six industry experts. The session will conclude with a networking reception. Local beer, wine and appetizers will be served.

WHEN:  Thursday, October 8, 2015 – 3:00 pm – 6:00 pm

A seminar examining significant factors that may dictate whether your venture is successful – These factors include the interaction between R&D, Innovation, IP, and Business.

A panel of industry experts will address questions including:

  • What are the best business structures for operating success?
  • What are the strategic approaches connecting R&D, innovation, and patents?
  • Why and how does a business focused patent strategy need created?
  • How do SR&ED, and other tax challenges impact your venture or investment?
  • Why should company stakeholders care about these topics, and what is the cost of getting them wrong?

WHERE: Laurel Point Inn, Merino Room.


  • John McLeod – Reed Pope Business Lawyers
  • Anne Flanagan – Alliance Patents
  • James Ramsbottom – Merizzi Ramsbottom & Forster
  • Peter Cowan – Northworks IP
  • Jason Cheng – PwC
  • Elisabeth  Finch – PwC

Each of our speakers will talk to you about their area of expertise for twenty minutes, followed by a panel discussion moderated by Peter Elkins of the Capital Investment Network

COST: $45, includes refreshments and appetizers.

REGISTER: To register click on the following link

Speaker & Session Details:

 Session #1: Structures for Success
(John McLeod, Associate Counsel at Reed Pope Law Corporation)

This session will highlight the importance of adopting business structures that suit your operating environment and capital raising, tax, IP and other goals.  John will review steps you can take to document ownership of IP as between your business and its founders, employees, consultants and partners.  If you build value, the strength of your IP portfolio will likely be tested through due diligence or litigation or both.

Session #2: Developing and Protecting Technology
(Anne Flanagan, Owner, Alliance Patents)

A strategic approach to developing and protecting technology is essential for any company, whether a start up based on new technology, or an existing company looking to maintain their competitive advantage.  This session will discuss strategies to mesh company R&D with the development of a patent portfolio.

Session #3: Canadian Organization Filing Strategies
(James Ramsbottom, Partner & Patent Agent, Merizzi Ramsbottom & Forster)

A strategically built intellectual property portfolio is the cornerstone any organization involved in the development, marketing and selling of technological advancements.  This session will review some high-level patent prosecution strategies that may be available to organizations for developing their patent portfolios in a timely manner, using programs available through Canadian Patent Office and other foreign patent offices, which can be leveraged internationally.

Session #4: IP and strategies to secure sustainable competitive advantage
(Peter Cowan, Northworks IP)

An IP strategy is vital for all businesses that rely on IP to support or generate revenue. This session will review the key points in building and developing a business focused IP strategy that can both lock out competitors as well as create a scalable and sustainable competitive advantage.  It will illustrate how to create and evolve your IP strategy, and bring the discussion into the boardroom.

Session #5: SR&ED Update: Are your claims aligned with new case law & CRA expectations?
(Jason Cheng, Partner, PwC)

The Scientific Research & Experimental Development (SR&ED) program remains a key source of funding for innovative businesses. Ensure that you continue to protect your investment in R&D by learning the latest on this key tax credit program, understand the current approach the CRA is taking on file reviews, and hear about the implications of significant recent court rulings that could be beneficial to your claim.

Session #6: Moving and using IP across international borders: tax opportunities and challenges
(Elisabeth Finch, Partner, Tax Services, PwC)

This session will explain the international tax challenges you will face when creating an effective international IP structure, in a way everyone can understand. Elisabeth will also highlight the reasons your company’s stakeholders will care about these structures being right, and the costs of getting it wrong.

Session #7: Bringing it all together: Business, R&D, IP, & Innovation

(Peter Elkins, Capital Investment Network).

Peter will host a moderated discussion with the panel members.


Top IP business insights to read (June 2015)

Last month I came across 4 articles of interest and insight  – worth reading when you have the time:

If you have others to add, please let me know and I will post them as well.