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Creating and Commercializing your Patent Portfolio “Supersize” your profitability! Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary © Copyright.

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Presentation on theme: "Creating and Commercializing your Patent Portfolio “Supersize” your profitability! Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary © Copyright."— Presentation transcript:

1 Creating and Commercializing your Patent Portfolio “Supersize” your profitability! Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

2 Israel is known for it’s high tech industry – Why? © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

3 Israel: A Silicon “Wadi” © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

4 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

5 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

6 How do you make money out of knowledge? Commercialize your Patents © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

7 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

8 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

9 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

10 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

11 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

12 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

13 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

14 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

15 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


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