Corporate Patent Acquisitions




About the Course:

If you want to sell your patents to an operating company, you really need to listen to this webinar. This session illuminates an opaque realm of patent monetization. The speaker discusses how to best sell patents to operating companies. Issues such as preparing claims charts and demand letters are examined. Insights into timing negotiations and identifying the right negotiating counterparts inside of large companies is provided.

The following are among the issues ventilated during this unique webinar:

  • When are companies most receptive to purchasing patents?
  • How can patentees reduce the risks of potential patent buyers from moving to invalidate or bring declaratory judgments against their patents?
  • What qualities do patents that are more likely to sell have in terms of prior art, claims, patent families and remaining lives? How important are dependent claims relative to independent claims?
  • Under what circumstances can evidence of infringement be invalidly obtained?
  • Which valuation methods are more likely to be embraced by corporate patent buyers?
  • How attractive are expired patents in terms of enforceability for past infringement?
  • How instructive are forward citations in terms of patent salability?
  • Why do some corporations elect to disguise their identities by using intermediaries to facilitate patent acquisitions?
  • When is the identity of secretive corporate patent buyers revealed?
  • In what ways do privately-held corporate patent buyers differ from publicly-traded patent buyers?
  • Should patent buyers initially state which patents they are most interested in acquiring? Or should they indicate that they are interested in a broader number of patents and then whittle down their target list later in the negotiation?
  • What are the downsides to patentees signing NDAs with potential patent buyers?
  • Why might patent values, based on recent transactions, be understated?

Course Leaders: Sanjay Prasad, Founder, Prasad IP, PC

Prasad IP, PC is a Silicon Valley based IP boutique providing advisory and transactional services for a range of entities including emerging and established companies, universities, governments and individuals.

Sanjay has over 25 years of experience in all phases of intellectual property law, licensing and related business transactions and works across the spectrum of IP, including advising senior management and boards on intellectual property strategy and risk mitigation, developing effective corporate IP programs, and patent acquisition programs advising on IP rights in corporate transactions, filing for patent and trademark protection, advising on competitive threats and disputes, and IP licensing and monetization.

Sanjay’s clients turn to him for his diverse experience including as chief patent counsel of a major tech company, business experience in the US and abroad as an IP executive, and in private practice in diverse patent matters.

Course Length: Approx. 1.5 hours

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