With the increase in R&D efforts by the company, it sometimes becomes a challenge to remain aware of the key patents the company owns which can be utilized as potential monetization assets.

At Citius Minds, we work closely in identifying such key sets of patents and valuate them in terms of their market scope. The ease of claim language, the ease of detectability of infringement etc. Seeing such analysis, the client can decide on prioritizing which patents to be put for monetization or which patents can be used for filing an infringement litigation against the potential infringers.

They helped me separate the best from the rest. All the questions, I had been trying to find solutions to, were answered. I was able to decide where to invest and what patents to let go.

Chief Technical Officer – Leading Semiconductor Company

Challenge:

A leading semi-conductor company had a large portfolio with patents related to technologies such as Antenna, Semiconductor chips, VLSI, and processor architecture, etc. The client wanted to monetize their patents by either licensing or selling it.

Execution:

Our team of consultants understood the client’s requirements and developed a unique methodology to meet the client’s needs. The main focus of this methodology was to identify and rate the most important patents according to several important parameters. The team came up with the following parameters; whether the patents were valid against the already published documents, whether the patents have applicability in the present and future market, and how strong is their legal background. This was achieved through a three phased methodology:

Phase 1 [Quick Analysis]: This phase involved analyzing each patent to check its applicability in the present and future market by reviewing various products/companies active in the patent domain. The team also analyzed the bibliographic details of each patent such as claim length, means plus function claim, claim broadness, and formula based claims to shortlist some of the patents on the basis of aforementioned analysis.

Phase 2 [Detailed Analysis]: In this phase, the team studied legal terms for each of the selected patents. Based on the study, an objective checklist was prepared which contained detailed information related to patent assignment/ownership; patent pair and patent file history, etc. A detailed validity search and product search were conducted to pull out available potential prior-art and infringing products. The strength of the patents was calculated by analyzing the objective checklist and prior art references while the applicability was determined by analyzing the products selected for every patent. An overall ranking (High/Medium/Low) was provided for each patent on the basis of phase 2 analysis.

Phase 3 [Report Preparation]: After the team had selected the most valuable patents from the entire portfolio, the team analyzed each of those patents to come up with technical and marketing insights. The final report format was decided after discussing with the client his specific needs and output requirements. A comprehensive report, highlighting the answers to the questions that the client had in the beginning of the project, was prepared to transfer all the information and analysis performed on the patent portfolio. The report also included detailed mapping of patents against the identified products. Several charts, graphs and infographics were created by our designing team to make the entire presentation more appealing and comprehensive.

Impact:

Based on the analysis, the client was able to gauge the value of each patent in their portfolio, hence, identify patents that were of high value. The client was also able to identify its competitors and their potentially infringing products. This helped them in making an informed decision on which patents to sell and which ones to hold and license out to competitors with potentially infringing products. The client was able to monetize its IP assets and make the most out of a large portfolio.

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