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Mining an Intellectual Property Portfolio: Ten Steps to Increasing Revenue



By Tamsen Valoir, PhD

Tamsen is a partner in the Houston office of Boulware & Valoir. She has a JD and LLM in Intellectual Property, a doctorate in molecular biology from Rice University, and her practice is primarily in intellectual property in the life sciences. tvlaoir@boulwarevaloir.com

In 2006 it was asserted that more than 60% of the value of the world’s quoted companies was due to their intellectual property.1 Since the US governmental seizure of Fannie Mae and Freddie Mac, the collapse of Lehman Brothers, and the subsequent $700 billion dollar US government buyout, the value of these intellectual property assets has probably declined. Yet, considerable value may yet be embedded in these portfolios, and now may be a good time to mine those portfolios for increased revenue as bottom lines continue to contract. This short article lists ten steps that a company might take to maximize the value of its intellectual property portfolio.

1. Intellectual Property List

In order to mine any portfolio, a list of intellectual property assets organized according to product line is needed. If you don’t already have a well-organized list, this is the place to start. Group all patents by family and indicate for each patent family which product the patents cover, the income that each product brings in (perhaps by region in a global company) and whether sales are increasing or decreasing. Include all serial, publication, and docket numbers, status information, at least one claim. You can also hyperlink the patent to the remainder of the claims. Don’t forget to include all patents acquired over the years, even ...

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